Au New Haven, LLC et al v. YKK Corporation

Filing 419

OPINION AND ORDER re: 359 MOTION TO EXCLUDE EXPERT TESTIMONY OF RANDY MEIROWITZ, filed by Au New Haven, LLC, 366 MOTION to Exclude Testimony of Plaintiffs' Experts, filed by YKK Vietnam Co., Ltd., YKK (Thailand) Co. , Ltd., Dalian YKK Zipper Co., Ltd., YKK Austria GMBH, YKK Korea Co., Ltd., YKK Fastening Products Sales Inc., YKK Bangladesh Pte. Ltd., YKK France Sarl, YKK Hong Kong Ltd., P.T. YKK Zipper Indonesia, Shanghai YKK Trading Co. Ltd., YKK Canada, YKK (U.S.A.) Inc., YKK Metal Ve Plastik Urunleri Sanayi Ve Ticaret A.S., YKK Taiwan Co., Ltd, YKK Zipper (Shenzhen) Co., Ltd., YKK Italia S.P.A., OOO YKK a/k/a YKK Russia, YKK (UK) Ltd., YKK Corporation, YKK Deutschlan d GMBH, 401 MOTION for Oral Argument Re: Daubert Motions [Dkt. Nos. 359, 361 & 366], filed by Trelleborg Coated Systems US, Inc., Au New Haven, LLC, 361 MOTION to Exclude Expert Testimony, filed by Trelleborg Coated S ystems US, Inc., Au New Haven, LLC. Both Plaintiffs' and Defendants' Daubert motions are granted in part and denied in part. The Clerk of the Court is respectfully requested to terminate the motions at ECF Nos. 359, 361, 366, and 401. (Signed by Magistrate Judge Sarah Netburn on 03/19/2019) (ras)

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-----------------------------------------------------------------X

03/19/2019

AU NEW HAVEN, LLC, and TRELLEBORG
COATED SYSTEMS US, INC.,
Plaintiffs,

15-CV-3411 (GHW)(SN)
OPINION AND ORDER

-againstYKK CORPORATION, et al.,
Defendants.
-----------------------------------------------------------------X
SARAH NETBURN, United States Magistrate Judge:

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TABLE OF CONTENTS
BACKGROUND ............................................................................................................................ 1
APPLICABLE LAW ...................................................................................................................... 2
DISCUSSION OF PLAINTIFFS’ DAUBERT MOTIONS ........................................................... 5
I. Plaintiffs’ Motion to Exclude Arntson..................................................................................... 5
II. Plaintiffs’ Motion to Exclude Dr. Meirowitz’s Testimony .................................................... 7
A. Dr. Meirowitz’s Invalidity Report ................................................................................... 9
1. Enablement and Definiteness ..................................................................................... 9
2. On-Sale Bar .............................................................................................................. 12
3. Derivation ................................................................................................................. 14
4. Foreign Law ............................................................................................................. 16
B. Dr. Meirowitz’s Non-Infringement Report .................................................................... 17
1. Comparison of Accused Products with Drawings .................................................... 18
2. Reliance on Marketing Materials ............................................................................. 21
3. Intent to Induce Infringement ................................................................................... 22
4. Meaning of Water-Resistance .................................................................................. 25
5. Water-Resistance Testing Methodology .................................................................. 26
6. Testing Conducted by YKK Employees .................................................................. 27
7. YKK’s Manufacturing Process ................................................................................ 28
8. Non-infringing Alternative ....................................................................................... 29
III. Plaintiffs’ Motion to Exclude Kindler................................................................................. 29
A. Lost Profits Legal Instruction......................................................................................... 30
B. Relevance of Opinions Regarding a Non-Exclusive Royalty ........................................ 31
C. Reliability of Non-Exclusive Royalty Opinion .............................................................. 32
D. Reliability of Kindler’s Rebuttal of Donohue’s Damages Estimate .............................. 33
E. Relevance of Hypothetical Royalty to Contract Damages ............................................. 34
F. Relevance of Alternative Measure of Lost Profits for High End Outerwear ................. 35
G. Relevance of Failure to Mitigate Opinion ...................................................................... 35
H. Reliability of Disgorgement Offset Opinion .................................................................. 36
IV. Plaintiffs’ Motion to Exclude All Opinions Relating to Non-Infringing Alternatives ....... 37
DISCUSSION OF DEFENDANTS’ DAUBERT MOTIONS ..................................................... 38
I. Defendants’ Motion to Exclude Bagley................................................................................. 39
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II. Defendants’ Motion to Exclude Cockrell ............................................................................. 41
A. Cockrell’s First Three Opinions Regarding High End Outerwear ................................. 42
B. Non-Infringing Alternatives ........................................................................................... 44
C. Consumer Confusion ...................................................................................................... 45
III. Defendants’ Motion to Exclude Donohue........................................................................... 46
A. Reliance on Cockrell ...................................................................................................... 47
B. Donohue’s Causation Opinions...................................................................................... 47
C. Donohue’s Statistical Sampling and Extrapolation ........................................................ 48
D. Donohue’s Lost Profits Estimates for Luggage ............................................................. 50
CONCLUSION ............................................................................................................................. 51

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This case is about patents for water-resistant zippers—the ‘214 Patent and related foreign
patents—owned by Plaintiffs. Plaintiffs allege that Defendants have infringed on the patent by
exceeding the scope of an exclusive license granted by Plaintiffs. Both parties move to exclude
expert witnesses before trial. Plaintiffs move to exclude testimony from three of Defendants’
experts: (1) Dr. Randy Emil Meirowitz, a technical expert who supports Defendants’ noninfringement and invalidity defenses; (2) Paul Krak Arntson, who speaks to industry definitions
and the outerwear industry’s use of the zippers; and (3) Lauren R. Kindler, Defendants’ damages
expert. 1 Defendants have cross-moved to exclude testimony from three of Plaintiffs’ experts: (1)
David W. Cockrell, a clothing designer who speaks to industry definitions and use of the zippers;
(2) Margo A. Bagley, a law professor and Plaintiffs’ foreign patent law expert; and (3) James J.
Donohue, Plaintiffs’ damages expert. 2
For the reasons discussed below, both parties raise some valid arguments, but none of the
motions is justified in its entirety. These motions are granted in part and denied in part.
BACKGROUND
The ‘214 Patent originates from conversations between Mike Blenkarn of Arc’teryx and
Stuart Press of Uretek, Inc. in the 1990s. At that time, Blenkarn was looking for someone who
could make a water-resistant zipper. He found Press, who made the water-resistant zipper
claimed in the ‘214 Patent.

1

Plaintiffs’ first motion is exclusively dedicated towards excluding Dr. Meirowitz’s testimony.
See Pls.’ Meirowitz Memo. (ECF No. 360); Defs.’ Meirowitz Opp. (ECF No. 383); Pls.’ Meirowitz Reply
(ECF No. 391). Their second motion moves to exclude portions of Meirowitz’s, Arntson’s, and Kindler’s
reports. See Pls.’ Daubert Memo. (ECF No. 365); Defs.’ Daubert Opp. (ECF No. 385); Pls.’ Daubert
Reply (ECF No. 393).
2

See Defs.’ Daubert Memo. (ECF No. 367); Pls.’ Daubert Opp. (ECF No. 378); Defs.’ Daubert
Reply (ECF No. 394).

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After Press came up with his invention, Uretek began to water-proof zippers for YKK
Corporation’s American affiliate. Originally, YKK simply paid Uretek for the lamination
service, but YKK later wanted to manufacture and sell the water-resistant zipper globally at a
lower cost. To facilitate that goal, YKK and Uretek entered into an exclusive licensing
agreement that granted YKK the use of the ‘214 Patent and related patents with one exception:
Uretek did not grant YKK the right to use the patent for sales of zippers into the “high end
outerwear,” “marine,” “luggage (excluding sports and cosmetic bags),” or “military” markets.
After several years of cooperation, Uretek came to believe that YKK was selling the
patented zippers into those excluded markets. They were ultimately unable to resolve this
dispute, giving rise to this litigation. Plaintiffs—who are comprised of the company that later
purchased Uretek as well as the rebranded corporate iteration of Uretek, Au New Haven, LLC—
have sued for infringement of the ‘214 Patent, breach of the licensing agreement, deceptive
marketing under the Lanham Act, and deceptive practices under the Connecticut Unfair Trade
Practices Act. Defendants—who are comprised of YKK’s parent company and its local
affiliates—assert a variety of defenses, including that: (1) the ‘214 Patent and its foreign
analogues are invalid; (2) some of YKK’s water-resistant zippers do not infringe on the patents;
and (3) the licensing agreement does not prohibit sales into excluded markets. In the alternative,
Defendants also allege that Plaintiffs’ claim for damages—which assumes that Uretek would
have laminated all of the allegedly infringing zippers—are inflated and unfounded.
Both parties move to exclude experts who support these claims and defenses.
APPLICABLE LAW
Under Federal Rule of Evidence 702, an expert who is “qualified . . . by knowledge, skill,
experience, training, or education” may testify if the testimony would be helpful to the trier of

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fact, is “based on sufficient facts or data,” is “the product of reliable principles and methods,”
and the expert has reliably applied the facts of the case. 3 The “proponent of expert testimony has
the burden of establishing by a preponderance of the evidence that the admissibility requirements
of Rule 702 are satisfied.” 4
Rule 702 imposes “a special obligation upon a trial judge to ‘ensure that any and all
scientific testimony . . . is not only relevant, but reliable.’” 5 The court must determine whether
the expert “employs in the courtroom the same level of intellectual rigor that characterizes the
practice of an expert in the relevant field.” 6
The first step in evaluating a motion to exclude is determining “whether the expert has
sufficient qualifications to testify.” 7 If so, the second “question is ‘whether the proffered
testimony has a sufficiently reliable foundation.’” 8 It is “critical that an expert’s analysis be
reliable at every step,” for “any step that renders the analysis unreliable under the Daubert factors
renders the expert’s testimony inadmissible.” 9 To determine the reliability of the testimony, the
Court may consider factors including:
(1) whether a theory or technique can be (and has been) tested, (2)
whether the theory or technique has been subjected to peer review
and publication, (3) a technique’s known or potential rate of error,
and the existence and maintenance of standards controlling the
technique’s operation, and (4) whether a particular technique or
3

Fed. R. Evid. 702.

4

United States v. Williams, 506 F.3d 151. 160 (2d Cir. 2007).

5

Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quoting Daubert v. Merrell Dow
Pharmaceuticals, Inc., 509 U.S. 579, 589 (1993)); see also Davis v. Carroll, 937 F. Supp. 2d 390, 412
(S.D.N.Y. 2013) (the court serves an initial gatekeeping function of weeding out “junk science”).
6

Kumho Tire, 526 U.S. at 152.

7

Davis, 937 F. Supp. 2d at 412 (internal quotation marks omitted).

8

Id. (quoting Amorgianos v. Nat'l R.R. Passenger Corp., 303 F.3d 256, 265 (2d Cir. 2002)
(internal quotation marks omitted)).
9

Amorgianos, 303 F.3d at 267 (internal quotation omitted) (emphasis in original).

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theory has gained general acceptance in the relevant scientific
community. 10
Any contentions that the expert’s “assumptions are unfounded go to the weight, not the
admissibility, of the testimony.” 11 The Court need not exclude testimony because of a “minor
flaw in an expert’s reasoning or a slight modification of an otherwise reliable method.” 12 But
“nothing 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. A court
may conclude that there is simply too great an analytical gap between the data and the opinion
proffered.” 13
Because “the gatekeeping inquiry must be tied to the facts of a particular case,” 14 the
“Daubert inquiry is fluid and will necessarily vary from case to case.” 15 The “formality of a
separate hearing” is not always required for a district court to “effectively fulfill[] its gatekeeping
function under Daubert.” 16 Furthermore, the analysis is not limited to Rule 702. Expert testimony
“must also adhere to the other Federal Rules of Evidence, including Rule 403, which provides
that relevant evidence may still be excluded ‘if its probative value is substantially outweighed by
a danger of one or more of the following: unfair prejudice, confusing the issues, misleading the
jury, undue delay, wasting time, or needlessly presenting cumulative evidence.’” 17

10

Amorgianos, 303 F.3d at 266 (quoting Daubert, 509 U.S. at 593-94 (internal citations and
quotation marks omitted)).
11

Id. (internal citation omitted).

12

Amorgianos, 303 F.3d at 267 (internal citation omitted).

13

Gen Elec. Co. v. Joiner, 522 U.S. 136, 146, 118 S. Ct. 512, 139 L. Ed. 2d 508 (1997).

14

Kumho Tire, 526 U.S. at 150 (internal quotation marks omitted).

15

Amorgianos, 303 F.3d at 266.

16

Williams, 506 F.3d at 161.

17

A.V.E.L.A., Inc. v. Estate of Marilyn Monroe, LLC, 2019 U.S. Dist. LEXIS 14890, at *68-69
(S.D.N.Y. Jan. 30, 2019) (quoting Fed. R. Evid. 403).

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DISCUSSION OF PLAINTIFFS’ DAUBERT MOTIONS
In two separate motions, Plaintiffs move to exclude testimony from three of Defendants’
experts: (1) Dr. Randy Emil Meirowitz, a technical expert who has written two reports, one in
support of Defendants’ non-infringement defense, the other in support of Defendants’ invalidity
defense; (2) Paul Krak Arntson, who speaks to industry definitions and the outerwear industry’s
use of the accused zippers; and (3) Lauren R. Kindler, Defendants’ damages expert. 18
Because Arntson’s report is not irrelevant or unreliable, the motion to exclude his
testimony is denied. As for the other experts, Plaintiffs’ motions are granted in part and denied in
part. Some portions of Dr. Meirowitz’s report are inadmissible because they are irrelevant, are
beyond his expertise, constitute hearsay, or provide legal instruction reserved for the Court. The
bulk of his two reports are, however, admissible. Likewise, portions of Kindler’s report are
excluded because they constitute improper legal instruction or are insufficiently reliable. But
contrary to Plaintiffs’ arguments, the vast majority of her report is admissible.
I.

Plaintiffs’ Motion to Exclude Arntson
Paul Krak Arntson is a branding consultant with experience in merchandise management,

research design and development, and brand market positioning in the apparel industry, with a
particular focus in the outerwear market. 19 In his report, Arntson provides testimony from
someone with experience in the industry on a variety of subjects, including the industry
definitions of two of the license agreement’s excluded markets: “high end outerwear” and

18

Plaintiffs’ first motion is exclusively dedicated towards excluding Dr. Meirowitz’s testimony.
See Pls.’ Meirowitz Memo. (ECF No. 360); Defs.’ Meirowitz Opp. (ECF No. 383); Pls.’ Meirowitz Reply
(ECF No. 391). Their second motion moves to exclude portions of Meirowitz’s, Arntson’s, and Kindler’s
reports. See Pls.’ Daubert Memo. (ECF No. 365); Defs.’ Daubert Opp. (ECF No. 385); Pls.’ Daubert
Reply (ECF No. 393).
19

Arntson Rep. ¶ 5 (ECF No. 386-3).

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“luggage.” He defines “high end outerwear” as outerwear with a minimum manufacturer’s
suggested retail price (“MSRP”) of $500 in 2009 dollars, 20 and he defines luggage as “generally
comprised of suitcases or wheeled bags that one might check onto an airplane.” 21 Plaintiffs argue
this testimony is either unreliable due to insufficient corroboration or irrelevant to contract
interpretation under New York law. Neither argument is correct.
Arntson’s testimony regarding “high end outerwear” is not irrelevant. Plaintiffs observe,
correctly, that under New York law the contract must be interpreted according to the parties’
intent. 22 They then argue that Arntson’s definition must be irrelevant because the signatories,
Stuart Press and Masayuki Sarumaru, both have offered different definitions during their
depositions. 23 This argument misses an important point. If the Court finds that the term “high
end outerwear” is ambiguous, then extrinsic evidence such as industry usage will become
relevant. 24 Arntson, who has decades of experience in the outerwear apparel industry, 25 is
qualified to testify on the subject, 26 and his opinion will likely be helpful to a lay jury

20

Arntson Rep. ¶ 29 (ECF No. 386-3).

21

Id. ¶ 67.

22

See TCA TV Corp. v. McCollum, 839 F.3d 168, 188 (2d Cir. 2016) (“New York and California
law both instruct that contracts must be interpreted according to the mutual intent of the parties at the time
the contract was formed.”) (citations omitted).
23

Pls.’ Daubert Memo. at 3 (ECF No. 365) (citing Press 8/3/16 Dep. 216:5-21 (ECF No. 365-9),
Sarumaru Dep. 164:2-169:25 (ECF No. 365-10)).
24

See Christiania Gen. Ins. Corp. of N.Y. v. Great Am. Ins. Co., 979 F.2d 268, 274 (2d Cir. 1992)
(“[E]xtrinsic evidence may in appropriate cases include industry custom and practice.”) (applying New
York law).
25

Arntson Rep. ¶ 5 (ECF No. 386-3).

26

See SR Int’l Bus. Ins. Co. v. World Trade Ctr. Props., LLC, 467 F.3d 107, 132-34 (2d Cir.
2006) (affirming lower court’s admission of expert witness’ testimony to custom and usage despite
because the expert “testified that he had over 30 years of experience in the insurance industry (as both an
underwriter and a broker) and he was familiar with practices in the industry”).

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unexperienced in the field. 27
Arntson’s opinion on the definition of luggage is also admissible. Plaintiffs object that
Arntson does not have experience working in the narrowly defined luggage industry, and that he
offers no corroboration for his definition. 28 It is true that Arntson’s experience is not specifically
in the luggage industry; instead, his definition comes from the perspective of an expert in the
retail industry. 29 Arntson is qualified to offer that definition, whether or not he has corroborating
documents. 30 Plaintiffs may argue that this is not the relevant industry for interpreting the
licensing agreement, but that goes to weight, not admissibility.
Thus, Arntson’s report is sufficiently relevant and reliable. Plaintiffs’ motion to exclude
his definitions of “luggage” and “high end outerwear” is denied in its entirety.
II.

Plaintiffs’ Motion to Exclude Dr. Meirowitz’s Testimony
Dr. Randy Emil Meirowitz is a surface and advanced materials scientist with over 30

years of experience. 31 He has produced two expert reports in this case: one supports Defendants’
claim that the ‘214 and related foreign patents are invalid, 32 while the other supports Defendants’

27

As for Plaintiffs’ objection that Arntson defines the market segmentation according to price
points in 2009, this argument is also unavailing. Arntson believes that price points are used in the industry
to define high end outerwear. Prices change over time with inflation. There is nothing wrong with
Arntson pegging his opinion to 2009 prices. If Plaintiffs believe that the use of 2009 prices underinflates
their damages, then they may argue that point at trial.
28

See Pls.’ Daubert Memo. at 4 (citing Arntson Dep. 226:18-22 (ECF No. 365-8)).

29

Arntson Rep. ¶ 67 (ECF No. 386-3) (“Luggage has a well-understood meaning in the retail
industry. Namely, luggage is generally comprised of suitcases or wheeled bags that one might check onto
an airplane.”).
30

See Arntson Rep. ¶ 5 (ECF No. 386-3) (“My particular area of expertise is the outdoor apparel
industry, though I have a wide range of retail and apparel-based experience.”).
31

Meirowitz Invalidity Rep. ¶ 6 (ECF No. 360-1).

32

See Meirowitz Invalidity Rep. (ECF No. 360-1).

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claim that the accused zippers do not infringe on any of the domestic or foreign patents. 33
Plaintiffs move to exclude all of Dr. Meirowitz’s testimony, arguing that he is not an expert in
the relevant art. 34 In the alternative, Plaintiffs move to exclude specific portions of each report.
The motion to exclude all of Dr. Meirowitz’s testimony is denied. Plaintiffs argue that
Dr. Meirowitz is not qualified because the relevant art here is zipper manufacture, not the
chemical composition of the materials used to construct the zipper. 35 That argument is
misplaced. The relevant art here is coating and laminating fabric—in this case, fabric with zipper
teeth attached—for the purpose of obtaining water-resistance. Indeed, the claimed inventor of the
‘214 Patent, Stuart Press, had not worked with zippers before he applied his expertise in fabrics
lamination to the problem of zipper water-resistance. 36 Dr. Meirowitz is more than qualified as
an expert in that art. He has dedicated much of his career to studying how fabrics and related
materials interact with water and fluids; he has even written textbooks on the subject. 37 He is
qualified to testify to issues in this case in a way that will be helpful to the jury, and that
testimony will not be excluded in its entirety.
As for the remainder of Plaintiffs’ motion, some of their arguments have merit, while
others do not. The remainder of the motion is granted in part and denied in part as discussed
below.

33

See Meirowitz Non-Infringement Rep. (ECF No. 360-2).

34

Pls.’ Meirowitz Memo. at 18-19 (ECF No. 360).

35

Id.

36

See SUMF ¶ 358 (ECF No. 406).

37

See Meirowitz Non-Infringement Rpt. ¶¶ 9, 10, 16-19 (ECF No. 360-2).

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A. Dr. Meirowitz’s Invalidity Report
Plaintiffs move to exclude the following portions of Dr. Meirowitz’s invalidity report: (1)
testimony that the ‘214 Patent is indefinite and not enabling because the testimony constitutes
improper legal instruction; (2) testimony related to the on-sale bar defense on the grounds that it
contains legal instruction and is based on an unreliable test method; (3) testimony that Press
derived the ‘214 Patent from Blenkarn on the grounds that it is unhelpful to the trier of fact; and
(5) testimony relying on foreign patent law on the grounds that it is based upon undisclosed
expert reports.
Because the majority of the invalidity report comes from reliably applied scientific
methods that will be helpful to a lay jury, most of this testimony will not be stricken. But the
report also offers summations of domestic and foreign patent law beyond Dr. Meirowitz’s
expertise. Plaintiffs’ motion to strike those portions is granted for the reasons discussed below.
1. Enablement and Definiteness
Defendants claim that Plaintiffs’ patents are invalid due to a lack of enablement and
indefiniteness. To be enabling under the Patent Act “the specification of a patent must teach
those skilled in the art how to make and use the full scope of the claimed invention without
undue experimentation.” 38 As for definiteness, a patent is indefinite and invalid if its claims,
when read with the context of the specification and prosecution history, do not allow the public
to know what does and does not infringe upon the patent. 39

38

ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010) (internal quotation
marks omitted).
39

See Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369, 1375 (Fed. Cir.
2017) (citing Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014)); Halliburton Energy
Svcs., Inc. v. M‐I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008).

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Dr. Meirowitz provides support for both claims in his invalidity report. He opines that the
‘214 Patent is invalid due to a lack of enablement and indefiniteness, two closely related
requirements under the Patent Act. He also concludes that the related patents in Europe, Hong
Kong, Japan, Taiwan, and Canada are invalid under analogous requirements in each
jurisdiction. 40 Plaintiffs move to exclude several paragraphs of this testimony—paragraphs 93,
94, 166, 167, 171, 176, 181, 182, 366, 369, 374, 378, and 379—arguing that those paragraphs
contain legal conclusions regarding enablement and indefiniteness. 41 Because portions of the
paragraphs contain legal conclusions, the motion is granted in part.
Under Federal Rule of Evidence 704, an “opinion is not objectionable just because it
embraces an ultimate issue,” 42 but an expert also “may not testify as to what the law is, because
such testimony would impinge on the trial court’s function.” 43 This is a rather fine, but
manageable, distinction. A qualified expert can testify whether a decedent had the mental
capacity to fully understand the meaning and consequences of a will. 44 Such testimony would
assist the jury in fulfilling its duty of reaching factual conclusions and applying those
conclusions to the court’s legal instructions. An expert may not, however, testify that a decedent
lacked the capacity to make a will. 45 That testimony would draw the connection between the

40

Dr. Meirowitz concludes that all six patents are invalid due to a lack of enablement and or its
foreign analogue. See Meirowitz Invalidity Report at 15-50 (ECF No. 360-1). But he only concludes that
the patents in the United States, Europe, Hong Kong, and Canada are invalid due to a lack of definiteness.
Id. at 103-6.
41

Pl.’s Memo. Exclude Meirowitz at 17 (ECF No. 360).

42

Fed. R. Evid. 704(a).

43

In re Air Disaster at Lockerbie Scot., 37 F.3d 804, 826-27 (2d Cir. 1994) (citation omitted).

44

Id.

45

Cargill, Inc. v. Sears Petroleum & Transp. Corp., 334 F. Supp. 2d 197, 249-50 (N.D.N.Y. 2004)
(citing Fed. R. Evid. 704 advisory committee’s note).

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factual conclusion and the legal conclusion, which would “implicitly provide a legal standard to
the jury.” 46
Some, but not all, portions of the paragraphs objected to by Plaintiffs fall into the former
category. In most of them, Dr. Meirowitz opines that, based on his experience in materials
design, a person of ordinary skill in the relevant areas would not be able to make the patented
zippers without undue experimentation. 47 He also testifies that most people in the relevant
industry do not know what “water-resistant” means because fabrics exhibit a wide spectrum of
water-resistance that is typically defined using objective and quantifiable tests. 48 That testimony
would permissibly and helpfully assist a lay jury in answering the ultimate factual questions of
enablement and indefiniteness. In those same paragraphs, however, he goes on to conclude that
the patent is invalid because it fails to meet the enablement and definiteness requirement of
several nation’s patent laws. 49 The latter testimony would improperly impede on the Court’s
function of instructing the jury on the applicable law. 50
46

In re Air Disaster at Lockerbie Scot., 37 F.3d at 826-27.

47

See, e.g., Meirowitz Invalidity Report ¶ 166 (ECF No. 360-1) (“[I]t is my opinion that claims
12, 13, 15-19, 21 and 25 of the EP ‘586 and HK ‘423 Patents are invalid on the basis of classical
insufficiency, as the instructions in the patent specification do not enable the ordinary skilled person to
perform the purported invention.”).
48

See, e.g., id. ¶ 369 (ECF No. 360-1) (“‘Water resistant’ divorced from standard industry tests of
water resistance is not a term that one of ordinary skill in the art would understand the boundaries of with
reasonable certainty.”).
49

See, e.g., id. ¶ 166 (ECF No. 360-1) (“For the same reasons discussed above for the US ‘214
Patent, it is my opinion that claims 12, 13, 15-19, 21 and 25 of the EP ‘586 and HK ‘423 Patents are
invalid on the basis of classical insufficiency. . . .”); id. ¶ 369 (“Therefore, it is my opinion that the scope
of claims 1, 2, 4-8, 10, 14-17, and 23 of the US ‘214 Patent is not reasonably certain, and those claims are
invalid as indefinite.”).
50

Accord Bausch & Lomb, Inc. v. Alcon Labs., Inc., 79 F. Supp. 2d 252, 257-58 (W.D.N.Y.
2000) (excluding expert testimony about “what is required for a patent to be valid . . . . including matters
relating to prior art, obviousness, enablement, and the ‘best mode’ requirement” because it was
“calculated to invade the province of the court to determine the applicable law and to instruct the jury as
to that law”) (citation and quotation marks omitted).

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Thus, Dr. Meirowitz may offer his opinion that, for example, “the US ‘214 Patent does
not disclose sufficient information to permit a person of ordinary skill in the art to make the
claimed water resistant zipper without undue experimentation,” but he may not testify that
“claim 1 of the US ‘214 Patent is invalid for failing to satisfy the enablement requirement.” 51
2. On-Sale Bar
Plaintiffs move to exclude paragraphs 322-365 of Dr. Meirowitz’s invalidity report that
relate to Defendants’ “on-sale bar” defense. 52 Under that rule, a patent is invalid if “the claimed
invention was (1) the subject of a commercial offer for sale; and (2) ready for patenting” more
than one year before the patent’s effective filing date. 53 Dr. Meirowitz supports this defense,
concluding that one of Uretek’s 1996 prototype zippers satisfies both elements. Plaintiffs assert
two bases for excluding the testimony: (1) Dr. Meirowitz offers improper legal conclusions in
these paragraphs; and (2) his opinion is not based on the best testing method for adhesion. 54 The
first argument has a little merit, and the second has none.
Regarding the first, Dr. Meirowitz does offer some legal instructions and conclusions that
are beyond his expertise and invade the Court’s role of instructing the jury. Specifically,
paragraph 323, in which he relays his hearsay understanding of the on-sale bar rule, and
paragraph 324, in which he states that the ‘214 Patent is invalid. The Court will instruct the jury
on the elements of the on-sale bar defense, and the Court will instruct the jury that if those
elements are met, then the patent is invalid. Dr. Meirowitz should not be allowed to preempt

51

Meirowitz Invalidity Rep. ¶ 93 (ECF No. 360-1).

52

Pl.’s Meirowitz Memo. at 12 (ECF No. 360).

53

Medicines Co. v. Hospira, Inc., 827 F.3d 1363, 1368 (Fed. Cir. 2016) (en banc) (citing Pfaff v.
Wells Elecs., Inc., 525 U.S. 55, 67-68 (1998)).
54

Pl.’s Meirowitz Memo. at 12-15 (ECF No. 360).

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those instructions from the Court. The rest of his testimony in paragraphs 322-365, however, is
admissible. In those paragraphs, he relays his testing and observation of the 1996 zipper
prototypes and concludes that they match every descriptor of the ‘214 Patent’s claims 1, 2, 4-8,
10, 14-17, and 23. That is admissible testimony.
Regarding the best testing method, Plaintiffs argument is unavailing. To conclude that the
zipper fell within the scope of the ‘214 Patent’s claims, Dr. Meirowitz had to test the prototype
to conclude if the water-resistant layer had a level of adhesion claimed in the ‘214 Patent.
Plaintiffs complain that Dr. Meirowitz did not use a standardized peel strength test, such as
Federal Test Method Std. No. 191A, Method 5970, which Dr. Meirowitz identified as the best
way to determine the 1996 samples’ level of adhesion. 55 But there is no rule that experts must
use the best testing method available; instead, if the testing method used undermines the expert’s
conclusion, then a party is free to—and should—attack the expert’s testimony with crossexamination or rebuttal reports.
The only requirement is that the testing method be reliable, 56 and Dr. Meirowitz’s
method here meets that standard. Because Plaintiffs did not allow Dr. Meirowitz to use a
standard adhesion test that would have destroyed the samples, Dr. Meirowitz came up with a
rather ingenious process of deduction. 57 First, he tested other zippers and found that they had

55

Meirowitz Invalidity Report ¶ 330 (ECF No. 360-1).

56

Fed. R. Evid. 702.

57

Plaintiffs argue that Defendants have “waived” the argument that Plaintiffs’ refusal to allow for
destructive testing of the samples justified Dr. Meirowitz’s work-around method. See Pls.’ Meirowitz
Reply at 8 (ECF No. 391). This argument is misplaced. Certainly, it would have been untimely—although
not prohibited—for Defendants to ask for a sanction, such as an adverse inference, after failing to file a
motion to compel the adverse testing. See, e.g., SEC v. Huff, 2010 U.S. Dist. LEXIS 6916, at *10-11
(S.D. Fla. Jan. 13, 2010) (interpreting a motion to exclude expert testimony as a motion to compel
because “[a]lthough this Court is reluctant to find that failure to file a motion to compel waives a party’s
right to seek to exclude evidence or other severe sanctions, fairness suggests that a party opposing the
discovery should have the opportunity to do so without subjecting itself to the death penalty for its

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levels of adhesion higher than those specified in the ‘214 Patent’s claims. Second, he attempted,
successfully, to peel off the water-resistant layer of the other zippers with his fingers. Third, he
attempted, unsuccessfully, to peel off the water-resistant layer of the 1996 sample. Thus, with
simple logic, he concludes that the 1996 sample zippers must have an adhesion level greater than
the others tested, and therefore must also have a level of adhesion greater than those claimed in
the ‘214 Patent. Certainly, one can quibble with the test—how, for example, can we be sure that
Dr. Meirowitz really tried to peel off the layer of the 1996 sample?—but there is no evidence that
the method is so inherently unreliable as to render it inadmissible under Rule 702.
Thus, Dr. Meirowitz’s opinions in paragraphs 322-365 that relay the law of on-sale bar
and opine that the ‘214 Patent is invalid are barred. Otherwise, the testimony contained in those
paragraphs is admissible. It would helpfully walk a lay jury through the elements of the claims,
relay observations and test results, and identify the presence of those elements in the 1996
sample. All of this would be helpful to the jury.
3. Derivation
Under the Patent Act, a person is “entitled to a patent unless he did not himself invent the
subject matter sought to be patented.” 58 Defendants claim that Stuart Press derived the invention
claimed in the ‘214 Patent from Mike Blenkarn, 59 thereby rendering the patent invalid. In

evidence, if it guesses wrong”); see also Simuro v. Shedd, 2016 U.S. Dist. LEXIS 194582, at *33 (D. Vt.
Nov. 9, 2016) (finding that failure to file a motion to compel did not waive a motion to sanction with
exclusion and assessing the motion to exclude on the merits). But that is not the situation here.
Defendants are not asking for a sanction; instead, they found a workaround test given Plaintiffs’ refusal. If
anything, it is now improper for Plaintiffs to insist that Dr. Meirowitz’s report should be excluded
because he should have used a test that they forbade.
58

35 U.S.C. § 102(f) (2000). That section of the act has since been amended, and the inventorship
requirement now resides in 35 U.S.C.A. § 116 (2018).
59

See, Am. Supp. Answer at 20 (ECF No. 142).

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support of that claim, Dr. Meirowitz reviews the deposition testimony of Press and Blenkarn
before concluding that Press derived the invention from Blenkarn. Plaintiffs move to exclude that
testimony—paragraphs 301-321—arguing that this testimony is a combination of improper legal
instruction and opinions regarding ultimate issues that require no expertise. 60
Plaintiffs are partially correct. The testimony in paragraph 301 does improperly instruct
the jury regarding the elements of derivation. It is stricken. Everything else, however, may be
admissible in the proper context. To prove derivation, Defendants must show that Blenkarn
communicated a prior conception of the invention to Press and that this communication would
have enabled an ordinary person skilled in the relevant art to make the ‘214 Patent’s zippers. 61
Whether their communications were enabling is a technical question; a lay jury will not know the
state of knowledge of fabric lamination in the mid-90s. Dr. Meirowitz’s testimony can help fill
their lack of knowledge with his expertise. 62
That said, a detailed review of Press and Blenkarn’s depositions as presented in the report
would be inadmissible under Rule 403. Because it is triple hearsay, it has limited probative

60

Pls.’ Meirowitz Memo. at 15-17 (ECF No. 360).

61

See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1344 (Fed. Cir. 2003) (“The
communication must be sufficient to enable one of ordinary skill in the art to make the patented
invention.”) (citation omitted); Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1577
(Fed. Cir. 1997) (“The Supreme Court announced the standard for finding communication of a prior
conception over 125 years ago . . . . The Court required a showing that the communication ‘enabled an
ordinary mechanic, without the exercise of any ingenuity and special skill on his part, to construct and put
the improvement in successful operation.’”) (quoting Agawam Woolen v. Jordan, 74 U.S. 583, 602-3
(1868)).
62

See, e.g., Meirowitz Invalidity Rep. ¶ 317 (“From Mr. Press’s and Mr. Herbst’s testimony, it is
clear that Mr. Press entirely derived the idea for the structure of the zipper . . . from Mr. Blenkarn and Mr.
Press . . . helped Mr. Blenkarn improve the quality of the manufacturing process used . . . . [I]t was
already well known in the art that it was desirable for a water resistant layer on a zipper to have high
adhesion and abrasion resistance without detracting from the flexibility of the zipper.”).

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value. And to the extent that the jury hears the evidence directly from Blenkarn’s testimony or
Press’s deposition, an exegesis from Dr. Meirowitz would be excessively cumulative.
Thus, Dr. Meirowitz will only be allowed to testify that specific communications would
have enabled one skilled in the art to produce the invention contained in the ‘214 Patent. That
will be helpful to a jury. Dr. Meirowitz will not, however, be allowed to relay any
communications not directly tied to that expert conclusion.
4. Foreign Law
In discussing the validity of the foreign patents, Dr. Meirowitz relies on memoranda
produced by law firms retained by Defendants. Plaintiffs believe these memoranda are
undisclosed expert reports and move to exclude paragraphs 161-182, 286-300, and 370-378 of
his invalidity report on the grounds that they rely on undisclosed experts in foreign patent law. 63
The motion is granted in part.
Plaintiffs here have confused two issues. Defendants are not attempting to rely on the
legal memoranda to prove foreign law to the Court; if they were, then the memoranda would be
undisclosed reports that should be excluded. 64 Instead, it is clear that Dr. Meirowitz was

63

Pls.’ Meirowitz Memo. at 15. Plaintiffs have also moved to exclude paragraph 93 of the noninfringement report on the same basis. That motion is denied. That paragraph does not opine on foreign
law. Instead, it offers his opinion about how the assertion of Plaintiffs’ foreign law expert would affect his
conclusion. That is proper rebuttal testimony.
64

See Narayanan v. Sutherland Glob. Holdings, Inc., 2018 U.S. Dist. LEXIS 82629, at *23
(W.D.N.Y. May 16, 2018) (“[A] party is entitled to discovery regarding its adversary’s foreign law
expert, just as it is entitled to discovery regarding any other kind of expert.”) (citation omitted); Silberman
v. Innovation Luggage, Inc., 2002 U.S. Dist. LEXIS 18456, at *4 (S.D.N.Y. Sep. 30, 2002) (collecting
cases); In re Bridgestone/Firestone, Inc., 131 F. Supp. 2d 1027, 1031 (S.D. Ind. 2001) (holding that where
defendants included affidavits from a number of foreign law experts in connection with a motion to
dismiss, discovery on the basis of the experts’ conclusions and qualifications was appropriate). One court
has reached a contrary conclusion, but that “decision appears contrary to the weight of authority on this
question.” Silberman, 2002 U.S. Dist. LEXIS 18456, at *5 n.1 (citing BCCI Holdings (Luxembourg) v.
Khalil, 184 F.R.D. 3, 9 (D.D.C. 1999)).

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informed of the legal framework at issue to guide his assessment of the facts. That is wholly
proper.
That said, for the same reasons that Dr. Meirowitz cannot instruct the jury on domestic
patent law, he also may not instruct the jury on foreign patent law, both because he is not an
expert and because it would improperly infringe on the Court’s role of instructing the jury. Thus,
any paragraphs that simply describe the requirements of foreign patent law are stricken. 65
Furthermore, his opinion that the foreign patents are “invalid” for failing to comply with foreign
patent law is also impermissible. 66 The remainder of these paragraphs are, however, permissible.
In those sections, Dr. Meirowitz applies his understanding of the facts and his technical expertise
to make factual conclusions regarding the foreign patents. That is wholly proper.
B. Dr. Meirowitz’s Non-Infringement Report
To prove their non-infringement defense, Defendants must show that the accused zippers
do not fall within the definition of claims in each patent. To support that defense, Dr. Meirowitz
opines that YKK’s water-resistant zippers did not infringe on the patents for several reasons,
including that: (1) some of the zippers are not water-resistant; (2) some of the zippers are
constructed differently than the patented zippers; and (3) YKK did not intentionally sell the
zippers outside of their license.
Plaintiffs move to exclude much of this testimony, including: (1) testimony based on
illustrations comparing YKK’s zippers with Figure 1 of the ‘214 Patent on the grounds that it is
irrelevant; (2) testimony relying on YKK’s marketing materials on the grounds it is irrelevant;
(3) testimony that there is no evidence of intent to induce infringement on the grounds it is not

65

See, e.g., Meirowitz Invalidity Rep. ¶¶ 161-2 (ECF No. 360-1).

66

See, e.g., id. ¶¶ 166-7 (ECF No. 360-1).

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helpful to the trier of fact; (4) testimony that some of YKK’s zippers are not water resistant on
the grounds that it is contrary to the Court’s earlier ruling on claim construction; (5) testimony
based on results from the AATCC 42 water-resistance test on the grounds that the test was not
properly conducted; (6) testimony based on tests conducted by YKK’s employees on the grounds
that it is both hearsay and the product of unreliable testing; (7) testimony describing YKK’s
manufacturing processes on the grounds that it is hearsay; and (8) testimony of whether people in
the outerwear industry consider YKK’s zippers to be water-resistant.
1. Comparison of Accused Products with Drawings
Plaintiffs move to strike paragraphs 50-56 and 59-66 of Dr. Meirowitz’s noninfringement report. 67 They argue that these paragraphs compare YKK’s zippers with images
from Plaintiffs’ patents that are not to scale and are, therefore, irrelevant in assessing
infringement under U.S. patent law. 68 Defendants argue that Dr. Meirowitz offers no opinions in
those paragraphs, and that they are permissible background relevant to assessing infringement of
the foreign patents. 69 Both parties are half right. I exclude portions of paragraphs 50-56 and 5966.
In the paragraphs, Meirowitz relies on pictures of several YKK-manufactured zippers to
conclude that the zippers have gaps between the stringer tape and water-resistant layer, even
when zipped, and that the water-resistant layer partially overhangs the stringer tape. 70 Based on
that examination, he then produces two sets of drawings to illustrate the differences between

67

Pls.’ Meirowitz Memo. at 2 (ECF No. 360).

68

Id. at 2-3.

69

Defs.’ Meirowitz Opp. at 5-6 (ECF No. 383).

70

Meirowitz Non-Infringement Rep. ¶¶ 50-56, 59-65 (ECF No. 360-2). The stringer tape is the
fabric attached to the zipper coil.

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YKK’s Reverse Coil AquaGuard and Reverse Coil Decorative Zippers: 71

The drawing of the Asserted Patents appears to come from figures contained in the patents,
including Figure 1 of the ‘214 Patent. 72 Dr. Meirowitz produced his own drawings depicting
YKK’s zippers, adding color to indicate stringer tape with yellow, polyurethane with green, and
the zipper coil with red. 73
In arguing that these paragraphs are irrelevant, Plaintiffs overstate their case. The ‘214
Patent lays claim to a water-resistant zipper, which is specified to include a minimal gap between
the two halves of the water-resistant layer. 74 In his report, Dr. Meirowitz concludes that the gap

71

Meirowitz Non-Infringement Rep. ¶¶ 56, 65 (ECF No. 360-2).

72

Compare, e.g., ‘214 Patent at 2 (ECF No. 406-35).

73

Meirowitz Non-Infringement Rep. ¶¶ 56, 65 (ECF No. 360-2).

74

See, e.g., ‘214 Patent at 3:32-37 (ECF No. 406-35).

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in YKK’s zippers is larger than those specified, which he identifies as one reason that YKK’s
zippers are not water-resistant. 75 Testimony along those lines is plainly relevant to the question
of whether YKK’s zippers fall within the claims of the ‘214 Patent, 76 and pictures of the gaps are
a helpful, relevant, and admissible demonstration of the factual basis for his conclusions.
The drawing purporting to compare the YKK zippers to scale with the drawing of the
patented zipper, however, has minimal, if any, probative value. The Federal Circuit has made it
clear that “patent drawings do not define the precise proportions of the elements and may not be
relied on to show particular sizes if the specification is completely silent on the issue.” 77 The
juxtaposition of Figure 1 of the ‘214 Patent with Dr. Meirowitz’s drawing invites that
impermissible inference. Figure 1 of the ‘214 Patent depicts no gap, even though the ‘214 Patent
explicitly contemplates that there may be some gap. 78 By juxtaposing the stylized YKK zipper

75

See Meirowitz Non-Infringement Rep. ¶¶ 90, 96, 98, 132-33, 136, 138, 140, 163, 165, 167 90
(ECF No. 360-2). Defendants argue that paragraphs 50-56 and 59-66 pertain only to Dr. Meirowitz’s
opinions on infringement of the foreign patents. See Defs.’ Meirowitz Opp. at 5. And it is true that Dr.
Meirowitz does not cite these paragraphs in his opinion regarding the ‘214 Patent, but he does rely on his
conclusion that there is a gap in YKK’s zippers. See Meirowitz Non-Infringement Rep. ¶ 90 (ECF No.
360-2) (“The gaps in the polyurethane and between the stringer tapes provide an easy path for water to
penetrate through and wet the zipper.”).
76

See 4 Modern Federal Jury Instructions-Civil P 86.02 (2018) (stating that the first element for
direct infringement is “that every requirement in the asserted claim in the patent is included in defendant’s
product (or method)”).
77

Hockerson-Halberstadt, Inc. v. Avia Grp. Int'l Inc., 222 F.3d 951, 956 (Fed. Cir. 2000); see also
Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed. Cir. 2005) (“Absent any written description in the
specification of quantitative values, arguments based on measurements of a drawing are of little value.”)
(quoting In re Wright, 569 F.2d 1124, 1127 (C.C.P.A. 1977)); Cacace v. Meyer Mktg. (Macau Commer.
Offshore) Co., 812 F. Supp. 2d 547, 563-65 (S.D.N.Y. 2011) (“The law is clear that precise
measurements should not be made, and should not be considered by a court, where the drawings and
figures from which those measurements are derived are silent as to scale and proportion.”) (citation
omitted).
78

See ‘214 Patent at 3:32-37 (ECF No. 406-35) (“Film 26 and cut line 42 are preferably provided
so as to provide sections 50 of film 26 each having end surfaces 52, 54 which are reasonably square in
nature so as to provide contact or near contact between end surfaces 52, 54 which serve advantageously to
provide excellent resistance to permeation of water.”); id. at 6:20-24 (“After substantial use, a small gap

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with Figure 1, Dr. Meirowitz would impermissibly invite the conclusion that the YKK zipper has
a gap larger than that specified in the ‘214 Patent because it looks larger than any gap contained
in Figure 1.
The prejudicial nature of the comparison outweighs any probative value, and Dr.
Meirowitz should not be allowed to compare Figure 1 with his drawing at trial. Testimony and
pictures attesting to a gap in YKK’s zippers that defeats water-resistance is, however, relevant to
infringement of the ‘214 Patent, and it will be allowed at trial. 79
2. Reliance on Marketing Materials
In paragraphs 57, 58, and 85 of his non-infringement report, Dr. Meirowitz attests that
YKK’s zippers are not water resistant, citing to some of YKK’s marketing materials as
evidence. 80 Plaintiffs object that this evidence is irrelevant to the question of infringement, and
Defendants reply with citations to cases considering marketing materials. Plaintiffs’ motion is
granted.
Marketing materials may be relevant in a patent case. Plainly, if YKK tells customers that
the zippers are not water resistant, that has a tendency to make the fact of water-resistance “more

may eventually develop between surfaces 52, 54 of polyurethane material 26. However, such gap will
typically be less than about 0.5 mm, and will not affect the proper operation of polyurethane layer 26 in
accordance with the present invention.”); id. at 7:58-61 (“Also, the substantial abutting nature of
polyurethane coat or film along cut line 42 parallel to parting line 44 of gripper structure 22, provides
excellent resistance to water flow through gripper structure 22.”).
79

The parties dispute, without offering any authorities, whether the images and testimony would
be relevant to the question of infringement on the foreign patents. The Court will not, therefore, rule at
this time on the question of whether the images and testimony are or are not relevant to the foreign
patents. Cf. Hart v. Rick’s Cabaret Int’l, Inc., 967 F. Supp. 2d 901, 936 (S.D.N.Y. 2013) (“Neither party,
however, has identified, let alone addressed, this legal issue here. For the time being, therefore, the Court
declines to grant summary judgment to either party as to this claim, and denies both sides’ motions as to
this claim.”).
80

Meirowitz Non-Infringement Rep. ¶ 57 (ECF No. 360-2).

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or less probable than it would without the evidence.” 81 Several courts for this reason have
deemed marketing statements to be relevant to the question of infringement. 82
But the marketing statements here are also out of court statements offered to prove that
the zippers are not water-resistant, making them hearsay. 83 Although experts are free to rely on
otherwise inadmissible evidence, parties also cannot use experts as a Trojan Horse of hearsay. 84
Here, Dr. Meirowitz does not rely on the marketing statements to reach his conclusion that,
based on his tests, YKK’s zippers are not water-resistant. Thus, the Court will not allow Dr.
Meirowitz to testify about marketing materials that are both hearsay and not the ultimate basis
for his report; such evidence would be unnecessarily cumulative of his expert testimony while
adding minimal, if any, probative value.
3. Intent to Induce Infringement
Plaintiffs move to exclude paragraphs 69-75 of Dr. Meirowitz’s non-infringement report
in which he opines that there is no evidence of an intent to induce infringement. 85 Defendants
object, pointing to some cases where courts have considered expert testimony when discussing

81

Fed. R. Evid. 401.

82

See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1351 (Fed. Cir. 2007)
(“There is no prohibition against using the admissions of a party, whether in the form of marketing
materials or otherwise, as evidence in an infringement action; such admissions are entitled to weight
along with all other evidence of infringement.”); see also Allergan, Inc. v. Athena Cosmetics, Inc., 2013
WL 12141346, *6 (C.D. Cal. Mar. 5, 2013), aff’d, 738 F.3d 1350 (Fed. Cir. 2013) (holding that
statements in marketing materials directly addressing claim limitations supported finding of
infringement).
83

See Fed. R. Evid. 801(c).

84

Rotman v. Progressive Ins. Co., 955 F. Supp. 2d 272, 283 (D. Vt. 2013) (noting that it is
“appropriate for district courts to recognize the risk that a particular expert might become nothing more
than a transmitter of testimonial hearsay and exercise their discretion in a manner to avoid such abuses”)
(citation omitted).
85

Pls.’ Meirowitz Memo. at 4 (ECF No. 360).

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intent to induce. 86 Because this testimony is not based on any technical expertise, I agree with
Plaintiffs.
First, it must be noted that only paragraphs 71-75 discuss Defendants’ intent; paragraphs
69-70 discuss whether YKK’s sales were licensed or otherwise infringed on the ‘214 Patent. 87
Nevertheless, those paragraphs are just as impermissible. 88 In paragraph 69, Dr. Meirowitz
testifies to a factual issue—that YKK paid royalties under a licensing agreement that Plaintiffs
accepted—and then offers a legal conclusion—that the zipper sales were therefore licensed and
not infringing. 89 None of this is helpful to the jury or appropriate for an expert witness. Whether
YKK paid and Plaintiffs accepted royalties is a basic issue well within the capacity of a lay jury,
and the legal import of any acceptance of royalties is a legal instruction that must come from the
Court. 90 No testimony along these lines should come from Dr. Meirowitz, let alone any other
expert.
As for paragraph 70, the testimony there is equally inadmissible. There, Dr. Meirowitz
again testifies to basic facts beyond his personal knowledge—that YKK manufactured the
accused zippers abroad and did not import them—and then offers a legal instruction—that the
zippers were not infringing because they were not imported into or made in the United States. 91

86

Defs.’ Meirowitz Opp. at 14-15 (ECF No. 383).

87

Meirowitz Non-Infringement Rep. ¶¶ 69-75 (ECF No. 360-2).

88

Although Plaintiffs did not address these opinions in their motion, the Court may police the
opinions of expert witnesses sua sponte. See Brenord v. Catholic Med. Ctr. of Brooklyn & Queens, Inc.,
133 F. Supp. 2d 179, 188 n.4 (E.D.N.Y. 2001) (engaging in a sua sponte inquiry into qualifications of an
expert under Daubert) (collecting cases).
89

Meirowitz Non-Infringement Rep. ¶ 69 (ECF No. 360-2).

90

Island Intellectual Prop. LLC v. Deutsche Bank AG, 2012 U.S. Dist. LEXIS 21742, at *18
(S.D.N.Y. Feb. 14, 2012) (“[E]xperts may not transmit factual narrative to the jury nor may they usurp the
Court’s role to instruct the jury on the applicable law.”).
91

Meirowitz Non-Infringement Rep. ¶ 70 (ECF No. 360-2).

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This testimony offers no expertise helpful to a lay jury while also impermissibly offering
instructions on the law of patent infringement. It is excluded.
Moving onto the paragraphs regarding intent to induce infringement, Plaintiffs are correct
that this testimony is improper. Because science has not yet invented a way to read minds,
“inferences about the intent or motive of parties or others lie outside the bounds of expert
testimony.” 92 Instead, juries must answer questions of intent with the lay tools that they always
have: examination of testimony and documents, and assessment of credibility. Thus, Dr.
Meirowitz’s testimony that he has seen no evidence of an intent to induce infringement is
completely unnecessary, potentially misleading, and therefore inadmissible. The jury will
examine the evidence and decide whether they see evidence of intent. Dr. Meirowitz’s testimony
in paragraphs 71-75 is excluded. 93
The authorities cited by Defendants do not suggest otherwise. In those cases, the
witnesses offered expert insight into intent behind the design or structure of products, such as
how the user interface of software required users to use software in an infringing manner 94 or
how training manuals encouraged others to combine molecules in an infringing fashion. 95 That,

92

In re Rezulin Prods. Liab. Litig., 309 F. Supp. 2d 531, 547 (S.D.N.Y. 2004).

93

Accord id. (excluding expert testimony regarding intent to induce infringement because it
“merely repeated facts or opinions stated by other potential witnesses” and because “the opinions of these
witnesses on the intent, motives, or states of mind of corporations . . . have no basis in any relevant body
of knowledge or expertise); Island Intellectual Prop. LLC v. Deutsche Bank AG, 2012 U.S. Dist. LEXIS
21742, at *25 (S.D.N.Y. Feb. 14, 2012) (“Zatkovich may provide opinions within the scope of his
banking expertise, which scope does not extend to inferences regarding the specific intent of defendants .
. . or ultimate conclusions as to whether defendants induced infringement or not.”); BorgWarner, Inc. v.
Honeywell Int’l, Inc., 750 F. Supp. 2d 596, 611 (W.D.N.C. 2010) (“Honeywell’s intent with respect to the
patents-in-suit is a question for the trier of fact to decide and does not require the admission of expert
testimony.”).
94

Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1322-23 (Fed. Cir. 2009).

95

ClearValue, Inc. v. Pearl River Polymers, Inc., 735 F. Supp. 2d 560, 575-76 (E.D. Tex. 2010).

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unlike Dr. Meirowitz’s testimony, is helpful expertise beyond the understanding of a typical
juror.
Thus, I am precluding the testimony described in paragraphs 69-75 because it offers
impermissible legal instructions and opines on basic factual evidence within a lay jury’s
understanding.
4. Meaning of Water-Resistance
Plaintiffs move to exclude paragraphs 86-90 of Dr. Meirowitz’s non-infringement
report. 96 They argue that the paragraphs apply a construction of the ‘214 Patent’s claims at odds
with the Court’s earlier Markman decision. This motion is denied.
In the earlier decision, the Court construed “‘a water resistant layer on second surfaces’
to mean just that: a water resistant layer on said second surfaces.” 97 This construction rejected
Defendants’ position that “water resistant” should be construed according to a defined metric or
test.
Plaintiffs claim that Dr. Meirowitz’s testimony impermissibly argues for a different
construction. But they are wrong. In paragraphs 86-90, Dr. Meirowitz does not say that for a
zipper to be water resistant, it must satisfy a specific test or metric. Instead, Dr. Meirowitz
conducted “every single standard water resistance test [he is] aware of that is appropriate for
testing zippers.” 98 He relays pictures and data demonstrating that water penetrated the zippers
under all of the tests, and based on these results he concludes that the zippers are not water
resistant.

96

Pl.’s Meirowitz Memo. at 4 (ECF No. 360).

97

Markman Decision at 18 (ECF No. 180).

98

Meirowitz Non-Infringement Rep. ¶ 90 (ECF No. 360-2).

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All of this is to say that Dr. Meirowitz does not insist on a specific definition or
construction of “water resistant.” Instead, he uses specific measurements of water resistance to
demonstrate that the zippers do not qualify as resistant to water. Nothing about this is improper.
Indeed, it is helpful to a lay jury. The Court will not strike paragraphs 86-90.
5. Water-Resistance Testing Methodology
In the alternative, Plaintiffs move to strike paragraphs 86-90 on the grounds that one of
the water resistance tests, the “AATCC 42” test, was performed improperly. This motion is
denied.
During this test, water is funneled from a uniform height above a sample that is weighted
down on a board angled at 45 degrees. The water resistance is measured by examining how
much, if any, water makes its way onto a blotter paper beneath the sample. Plaintiffs argue that at
least one of these tests deviated from the test’s parameters because the zipper sample was not
weighted down on both ends. Plaintiffs believe that water could have reached the blotter paper
“by seeping in around the edges,” and that the test is therefore unreliable.
This is not a cogent basis for excluding Dr. Meirowitz’s opinion. Plaintiffs do not argue
that the AATCC 42 test is itself an unreliable methodology, and any deviations or errors in its
application go to its weight, not its admissibility. 99 Vigorous “cross-examination, presentation of
contrary evidence, and careful instruction on the burden of proof are the traditional and

99

Accord Newport Corp. v. Lighthouse Photonics Inc., 2014 WL 1370749, at *3 (C.D. Cal. Apr.
8, 2014) (“Failure to perfectly adhere to methodologies promulgated by a standard-setting organization is
not, by itself, grounds for precluding expert testimony . . . .”); Responsive Innovations, LLC v.
Hotlzbrinck Publishers, LLC, 2014 WL 1237632, at *5 (N.D. Ohio Mar. 25, 2014) (“Defendants’
challenge to the efficacy of Bartone’s testing concerns the weight, not the admissibility of Bartone’s
testimony.”); PacTool Int’l, Ltd. v. Kett Tool Co., 2012 WL 3637391, at *3 (W.D. Wash. Aug. 22, 2012)
(“[T]hese issues [of data collection and test calibration] are best left to the factfinder to weigh during the
battle of the experts instead of the Court to weigh when considering the exclusion of an expert.”).

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appropriate means of attacking shaky but admissible evidence.” 100 If Plaintiffs believe that the
deviation from proper protocol for the AATCC 42 test undermined the results, then they should
avail themselves of those methods.
6. Testing Conducted by YKK Employees
Plaintiffs move to exclude paragraph 91 and 92 of Dr. Meirowitz’s report because it is
based on tests conducted by a YKK employee without Dr. Meirowitz’s involvement. This
argument is frivolous. Under Federal Rule of Evidence 703, an expert may testify to tests that he
did not personally conduct or observe so long as the expert “obtained sufficient personal
knowledge through review of the records of the tests.” 101 Plaintiffs do not argue, nor can they,
that Dr. Meirowitz has insufficient knowledge of the tests conducted by YKK; Dr. Meirowitz
attached YKK’s internal testing protocol and the results to his report, and he personally spoke
with the employee who conducted the tests. 102
Instead, Plaintiffs argue that YKK’s testing is unreliable because they think that the
result—that a polyurethane layer has little to no impact on water resistance—defies “common
sense.” They offer some first principles reasoning and other conflicting evidence in support of
their position. None of this is a valid basis for excluding the testimony. These are material facts
that Plaintiffs can present to the jury. The motion is denied.

100

Daubert, 509 U.S. at 595.

101

Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1383 (Fed. Cir. 2005); see also
Monsanto Co. v. David, 516 F.3d 1009, 1015 (Fed. Cir. 2008) (“[R]eliance on scientific test results
prepared by others may constitute the type of evidence that is reasonably relied upon by experts for
purposes of Rule of Evidence 703.”).
102

Meirowitz Non-Infringement Rep. ¶ 91 (ECF No. 360-2).

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7. YKK’s Manufacturing Process
Plaintiffs move to exclude Dr. Meirowitz’s testimony in paragraphs 43-49 and 67-68 that
explains the manufacturing process used for YKK’s zippers. 103 Dr. Meirowitz’s understanding of
the processes is derived from Mr. Konaka, who purportedly designed the manufacturing process
for some, but not all, of YKK’s zippers. This motion is denied without prejudice to renewal
during trial.
It may be permissible for experts to rely on otherwise inadmissible hearsay, but the
information relied upon must be disclosed and reliable. 104 Based on the briefing presented, it is
impossible to determine the reliability of Mr. Konaka’s out-of-court conversations with Dr.
Meirowitz. On the one hand, Plaintiffs have attached several snippets of his deposition where he
lacks information regarding the manufacture of some zippers. On the other hand, Defendants
assert—without any evidence—that Mr. Konaka designed the manufacturing process for the
AquaGuard zippers.
Assuming that Defendants’ assertion is true, some of Mr. Konaka’s knowledge must have
been reliable. But there is also evidence that Mr. Konaka’s knowledge regarding some zippers is
unreliable. Because Dr. Meirowitz’s testimony regarding YKK’s manufacturing processes
should not affect the summary judgment ruling here, the Court denies this motion without
prejudice to renewal. 105 Before or during trial, Defendants should have the opportunity to

103

Pl.’s Meirowitz Memo. at 5 (ECF No. 360).

104

See Cummins v. Lyle Indus., 93 F.3d 362, 372 (7th Cir. 1996) (Easterbrook, J.) (“The district
court was entitled to conclude that there has been an inadequate showing that the hearsay statements
relied upon by Dr. Carpenter in formulating his opinion are ‘of a type reasonably relied upon by experts
in the field.’”).
105

Accord In re Scotts EZ Seed Litig., 2017 U.S. Dist. LEXIS 125621, at *44-45 (S.D.N.Y. Aug.
7, 2017) (“Based on that understanding and because deciding plaintiffs’ Daubert motion with respect to

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demonstrate the scope and basis of Mr. Konaka’s knowledge that was conveyed to Dr.
Meirowitz. With more complete information, the Court can assess whether some—or all—of his
statements to Dr. Meirowitz were unreliable.
8. Non-infringing Alternative
Plaintiffs move to exclude paragraph 85 of Dr. Meirowitz’s non-infringement opinion in
which he opines that no “one in the outerwear or related industry would consider the layer that
includes the polyurethane to be water resistant.” 106 Plaintiffs argue that Dr. Meirowitz is not an
expert in the outerwear industry and so is not-qualified to offer this opinion. Contrary to
Plaintiffs’ assertions, Dr. Meirowitz has advised a number of companies and organizations on
outerwear, including Patagonia, Black Mountain Equipment, Marmot, The North Face, and the
U.S. Army. Plaintiffs do not explain why this experience is insufficient. This motion is denied.
III.

Plaintiffs’ Motion to Exclude Kindler
Lauren Kindler is an economist that Defendants have retained as their damages expert. In

her report, she offers her rebuttal to Plaintiffs’ damages expert, James Donohue. She argues that
lost profits and disgorgement are inappropriate remedies here but, in any event, that Donohue’s
calculations contain errors. In response, she provides alternative measurements that she says are
more accurate. In conclusion, she also determines a hypothetical royalty rate that she believes is
a superior measure of damages.
Plaintiffs move to exclude most of her testimony, arguing: (1) her testimony regarding
the appropriateness of lost profits is an improper legal instruction; (2) testimony regarding a
hypothetical royalty is irrelevant; (3) the hypothetical royalty she calculates is based on an

Dr. Nelson and Foust is not necessary for deciding the parties’ cross-motions for summary judgment,
plaintiffs’ motion to preclude the testimony of Dr. Nelson and Foust is denied without prejudice.”).
106

Pl.’s Memo. Exclude Meirowitz at 12 (ECF No. 360).

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unreliable method; (4) her rebuttal to Plaintiffs’ damages calculations is based on unreliable data;
(5) her hypothetical royalty is irrelevant to measurement of damages for breach of contract; (6)
the alternative measurement she generates using Plaintiffs’ expert’s method is irrelevant; (7)
testimony regarding Plaintiffs’ failure to mitigate damages is irrelevant; and (8) her rebuttal to
Plaintiffs’ calculation of a disgorgement remedy is unreliable.
Part of this motion is granted. Plaintiffs are correct that Kindler’s lost profits opinion
contains some inadmissible legal instruction. They are also correct that, because Defendants have
waived any mitigation defense, Kindler may not testify that Plaintiffs’ failed to mitigate their
damages. And they are right to point out that Kindler’s calculation of disgorgement damages is
based on unreliable data. But the rest of her testimony is neither unreliable nor irrelevant for the
reasons discussed below.
A. Lost Profits Legal Instruction
Plaintiffs move to exclude paragraphs 57 to 63 of Kindler’s report in which she opines
that Plaintiffs have not shown that YKK’s actions deprived Uretek of profits from YKK’s
purchase of lamination services. 107 They argue that the entirety of that opinion should be
excluded because it amounts to impermissible legal instruction. This motion is granted in part.
In two sentences of the relevant paragraphs, Kindler does testify to what Plaintiffs must
prove in order to obtain lost profits under the patent act. 108 That is an instruction of law reserved

107

Pls.’ Daubert Memo. at 4-5 (ECF No. 365).

108

Kindler Rep. ¶ 59 (“In order to establish a claim for lost profits in a patent infringement
context, the plaintiff needs to be able to show that in the absence of the infringement, it would have made
the infringing sales (i.e., that it competes directly for the sale of the accused product(s). As it pertains to
this case, in order to claim lost profits from laminating YKK’s Accused Zippers sold into Excluded
Markets, Uretek needs to be able to show that it would have been in a position to either (a) laminate those
zippers on behalf of other competing zipper manufacturers to whom those sales would have flowed or (b)
manufacture its own laminated zippers to capture YKK’s Accused Zipper sales.”).

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for the Court. It is accordingly excluded. The remainder of her opinion on this matter, however,
is free of legal instructions or opinions. In those paragraphs Kindler offers several cogent
arguments that Plaintiffs have failed to demonstrate but-for causation; specifically, she notes that
Uretek never laminated zippers for other customers, Uretek never tried to obtain business
laminating zippers for other customers, and Uretek in fact offered to license the remainder of the
patent in return for a straight royalty. 109 All of these observations are supported by citation to the
record and, as an economist, Kindler is qualified to offer her opinion regarding causation. Such
an opinion would also be helpful to a lay jury. 110 The motion is, therefore, granted in part and
denied in part.
B. Relevance of Opinions Regarding a Non-Exclusive Royalty
Plaintiffs move to exclude paragraphs 118 to 161 of Kindler’s report as irrelevant. In
those paragraphs, Kindler offers an opinion on the appropriate amount of royalty damages,
which she bases on her conclusion that in a hypothetical negotiation Uretek and YKK would
have agreed to a non-exclusive royalty for the excluded markets ranging between $0.05 to $0.09
per meter. 111 Plaintiffs argue that this opinion is irrelevant because no party ever offered a deal
involving a non-exclusive license during the actual negotiations. 112 Plaintiffs argument, however,
goes to weight, not admissibility. The motion is denied.

109

Kindler Rep. ¶ 58-63 (ECF No. 365-2).

110

See LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 67 (Fed. Cir. 2012) (“A
damages theory must be based on ‘sound economic and factual predicates.’”) (quoting Riles v. Shell
Exploration & Prod. Co., 298 F.3d 1302, 1311 (Fed. Cir. 2002)).
111

See Kindler Rep. ¶ 157 (ECF No. 365-2).

112

Kindler acknowledges that the proposals she reviewed did not involve a nonexclusive license.
See Kindler Dep. 220:16-20 (ECF No. 365-11).

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Under the Patent Act, a party may prove damages for patent infringement by proving a
royalty that the parties would have agreed to in a hypothetically successful negotiation. 113 Under
this standard, known as the Georgia-Pacific framework, 114 over a dozen factors can be relevant
to the royalty’s amount, including whether the license is exclusive or non-exclusive. 115 Kindler’s
detailed and thorough analysis culminating in her conclusion that the parties would have agreed
to a non-exclusive royalty is, therefore, relevant under the test. To the extent that Plaintiffs think
that an exclusive royalty arrangement was the more likely outcome of a hypothetical negotiation,
then that is their case to make. But it is not a valid basis for excluding this opinion.
C. Reliability of Non-Exclusive Royalty Opinion
Next, Plaintiffs argue that Kindler’s hypothetical royalty opinion is unreliable because in
assessing a hypothetical royalty, the expert must rely upon data points that are sufficiently
comparable and close in time to the hypothetical license. Plaintiffs argue that four of the data
points she discusses—a 1999 internal YKK memo, a 2001 internal YKK memo, a 2007 report
from the Analytical Finance Group, and a 2015 presentation prepared by Deloitte—are either too
temporally distant or are based on licenses that are too dissimilar. 116 They believe that those
comparators taint the entirety of her conclusion. This motion is denied.
Plaintiffs are correct that an expert’s assessment of a hypothetical license must be based
on sufficiently comparable data points. 117 And they offer many valid reasons to question the

113

Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009).

114

Id. (citing Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y.

115

See Ga.-Pacific Corp., 318 F. Supp. at 1120.

116

Pls.’ Daubert Memo. at 7-11 (ECF No. 365).

1970)).

117

See Ravo v. Covidien LP, 55 F. Supp.3d 766, 775 (W.D.Pa. 2014) (“[A]ny other licenses
relied upon to support a reasonable royalty analysis must be proven to be sufficiently comparable to the

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adjacency of those four data points to the hypothetical 2006 royalty agreement. But the fact that
Kindler discusses those data points in her report does not make her conclusion so profoundly
unreliable that it must be excluded. Indeed, her conclusion appears to derive from much more
reliable comparators. In reviewing the actual negotiations, Kindler saw evidence that Uretek
offered in 2004 to receive $0.05 per meter for the exclusive use of the patent in the luggage
market, and that Uretek later offered in 2007 to receive $0.09 per meter for exclusive use of the
patent with the exception of the military market. 118 Those offers—which nicely bookend the
hypothetical 2006 agreement—closely align with her conclusion that the parties would have
agreed to receive $0.05 per meter for the luggage market and $0.09 per meter for the high end
outerwear and military markets if the license were non-exclusive. 119 Her logic there is clear: if
Uretek was willing to offer those prices for an exclusive license, then it likely would have
accepted them for a non-exclusive license.
Certainly, Plaintiffs may argue that Uretek ultimately would never have agreed to a nonexclusive license and would have required a higher royalty, but her conclusions follow logically
from the evidence reviewed, and the opinion may be presented to the jury.
D. Reliability of Kindler’s Rebuttal of Donohue’s Damages Estimate
Plaintiffs also argue that Kindler’s reliance on the four data points discussed above—the
1999 internal YKK memo, 2001 internal YKK memo, 2007 report from the Analytical Finance
Group, and 2015 presentation prepared by Deloitte—irreparably taints her rebuttal of Donohue’s

hypothetical license at issue with respect to technology, economic terms, and time period.”) (quoting
Apple v. Motorola, Inc., 757 F.3d 1286, 1315 (Fed. Cir. 2014)).
118

See Kindler Rep. at 96, 97 (ECF No. 365-2).

119

See Kindler Rep. ¶ 157.

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opinion in paragraphs 106-7 of her report. 120 This motion is also denied. In those paragraphs,
Kindler merely points out that Donohue does not address these data points that are indicative of
value. She also observes that the valuations they contain, which range from $1.6 million to $9.3
million, are so grossly different from his estimate of lost profits that they suggest that his
calculations are in error. To the extent that Plaintiffs believe those data points are irrelevant
because they are not sufficiently comparable, that is an argument against the weight of her
opinion, not its admissibility. 121
E. Relevance of Hypothetical Royalty to Contract Damages
Plaintiffs also argue that Kindler’s hypothetical royalty is too speculative to assess
contract damages under New York law. But, as discussed above, her ultimate hypothetical
royalty is not pure speculation. Instead, she uses royalty numbers that were offered by Uretek in
negotiations. Thus, this is not a case with no prior licensing or negotiation history that would
make a hypothetical royalty impermissibly speculative under New York law. 122 Her opinion is
concrete enough to be relevant and considered in assessing damages for breach of contract. This
motion is denied.

120

Pls.’ Daubert Memo. at 7 (ECF No. 365).

121

Cf. Virnetx, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1328 (Fed. Cir. 2014) (“[Q]uestions
regarding which facts are most relevant for calculating a reasonable royalty are properly left to the jury.”).
122

Compare with Jill Stuart (Asia) LLC v. Sanei Int’l Co., 566 F. App’x 29, 32 (2d Cir. 2014)
(summary order) (finding that “Jill Stuart [had] failed to show reasonably certain, adequately proven, and
sufficiently non-conjectural consequential damages” under New York law because “Jill Stuart failed to
show sufficiently similar royalty contracts”); Document Sec. Sys. v. Coupons.com, Inc., 55 F. Supp. 3d
485, 498-99 (W.D.N.Y. 2014) (granting summary judgment on hypothetical royalty theory of damages
for breach of contract because evidence suggested that “Plaintiff had no standard licensing arrangement,
but rather, it negotiated each licensing agreement separately based on various factors”).

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F. Relevance of Alternative Measure of Lost Profits for High End Outerwear
In paragraphs 100-2 of her report, Kindler calculates an alternative to Donohue’s
damages by taking his method but assuming that “High End Outerwear” is limited to outerwear
sold in North America. 123 Plaintiffs argue that this testimony is irrelevant because there is no
evidence that the licensing agreement adopted that definition of “high end outerwear.”
Plaintiffs are incorrect. There is a dispute of material fact over the meaning of the phrase
“high end outerwear.” Defendants maintain that it was meant to be limited to sales in North
America, a contention that has some basis in admissible testimony, such as the deposition of Mr.
Akinobu Shibata. 124 Her alternative measurement of damages is, therefore, potentially relevant
and would be helpful to the jury. Plaintiffs’ motion to exclude this testimony is denied.
G. Relevance of Failure to Mitigate Opinion
In paragraphs 75-77 of her report, Kindler opines that there is a general duty to mitigate
losses from an alleged breach of contract. She goes on to say Uretek could have, but did not, take
various steps to mitigate its damages. Plaintiffs believe this testimony should be excluded as
irrelevant. They are correct. Failure “to mitigate damages is an affirmative defense and therefore
must be pleaded.” 125 Defendants did not include any mitigation defense in their response to the
operative complaint. 126 They may not, therefore, present such a defense to the jury, thereby

123

Kindler Rep. ¶¶ 100-2 (ECF No. 365-2)

124

See Kindler Rep. at 18 n. 74 (ECF No. 365-2) (quoting Shibata’s testimony that he understood
high end outerwear to mean “garments that are made in North America, in Canada and/or United States in
a niche market or a luxury market”).
125

Travellers Int’l, A.G. v. Trans World Airlines, 41 F.3d 1570, 1580 (2d Cir. 1994) (citing Fed.
R. Civ. P. 8(c)).
126

See generally Answer at 16-23 (ECF No. 142) (not including mitigation in list of affirmative

defenses).

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making Kindler’s testimony on the subject irrelevant. It must be excluded. 127
H. Reliability of Disgorgement Offset Opinion
In paragraph 116 of her report, Kindler testifies that Donohue’s disgorgement calculation
should include an offset for YKK’s costs. She believes the appropriate offset is 28% of YKK’s
revenue, a number she reaches by looking at data from YKK’s aggregate financial reports.
Plaintiffs argue that those reports are an unreliable basis for the opinion. They are correct.
The basis for the 28% figure is insufficiently reliable to satisfy Rule 702. The 28% figure
comes from YKK’s combined financial reports, which include business segments other than
zippers. Kindler believes that use of the 28% offset is still an appropriate estimate of costs for
zipper sales because a YKK executive, Mr. Shibata, told her it was reasonable to assume that the
proportion is similar for the lines of business that manufacture zippers. But Mr. Shibata has
insufficient personal knowledge to make his statement a reliable foundation. During his
deposition, for example, he did not even know if any YKK affiliates record their manufacturing
costs for polyurethane laminated coil zippers. 128 Kindler’s assumption, therefore, rests on infirm
ground, making her opinion inadmissible. 129 This motion is granted.

127

In theory, Defendants could have argued that an amendment to conform to the evidence
presented at summary judgment would be appropriate here under Rule 15. See, e.g., United States v. City
of N.Y., 847 F. Supp. 2d 395, 428 (E.D.N.Y. 2012) (finding that defendant had waived the defense but
granting an amendment to conform to evidence at summary judgment).
128

See Shibata Dep. 125:13-20 (ECF No. 365-2).

129

Accord Supply & Bldg. Co. v. Estee Lauder Int’l, Inc., 2001 U.S. Dist. LEXIS 20737, at *1415 (S.D.N.Y. Dec. 13, 2001) (finding expert testimony to be inadmissible because the expert “based his
report on his client’s unrealistic assurances rather than available records”).

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IV.

Plaintiffs’ Motion to Exclude All Opinions Relating to Non-Infringing Alternatives
Finally, Plaintiffs move to exclude all opinions offered by three of Defendants’ experts—

Meirowitz, Arntson, and Kindler—that relate to non-infringing alternatives. 130 Defendants offer
this testimony because if they can prove there were acceptable non-infringing alternatives, then
that undermines the but-for causation embedded within Plaintiffs’ requested damages. To
exclude the testimony, Plaintiffs argue that these opinions have insufficient factual bases that the
identified zippers were either non-infringing, an acceptable alternative, or available in the
market. This motion is denied.
Plaintiffs’ motion is essentially disagreement with the conclusion that goes to weight
rather than admissibility. 131 Indeed, an examination of the paragraphs they have tagged for
exclusion reveals that none of the experts goes beyond their expertise. Dr. Meirowitz, after
examining the ‘214 Patent’s claims in light of his experience in water-resistant textiles, identifies
three zippers that he believes do not fall within the ‘214 Patent’s claims. 132 As discussed above,
Dr. Meirowitz is qualified to make these kinds of comparisons under Rule 702. Likewise,
Arntson testifies—based on his decades of experience in the outdoor apparel industry—that the
three zippers mentioned by Dr. Meirowitz are in fact used by brands as a possible substitute to
the allegedly infringing zippers. And Kindler relies on their expert testimony to conclude that,
given the existence of these substitutable non-infringing zippers, Donohue’s damages’

130

Pls.’ Daubert Memo. at 15.

131

Accord Emerson Electric Co., v. Suzhou Cleva Electric, 2015 WL 8916113, at *10 (E.D. Mo.
Dec. 15, 2015) (denying motion to exclude expert testimony because even if the experts “incorrectly
assumed that the non-infringing alternatives were available during the relevant time frame when they
were not . . . [that] may be easily addressed through cross-examination and contrary testimony”).
132

Meirowitz Non-Infringement Rep. ¶¶ 179-192 (ECF No. 365-3).

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calculations are flawed. 133 There is no link in this chain of testimony that violates Rule 702.
Plaintiffs identify several facts that were not considered by these experts that may call the
conclusions into question; Arntson, for example, was not able to provide during his deposition
several facts about the industry’s use of the AquaTight Zipper or the Light Rail Zipper. 134 They
also offer some arguments that some of the zippers are used differently than the allegedly
infringing zippers. 135 And they argue that one of the zippers, the Talon AquaTight Zipper, is in
fact an infringing zipper. 136 All of this goes to weight, not admissibility. Indeed, Plaintiffs have
identified many reasons to disagree with the opinions, but they have identified no opinion that is
so unreliable that it fails to satisfy Rule 702. The motion is denied. 137
DISCUSSION OF DEFENDANTS’ DAUBERT MOTIONS
In one motion, Defendants move to exclude much of Bagley’s, Cockrell’s, and
Donohue’s reports, arguing: (1) Bagley’s report regarding the application of foreign law to this
case is inadmissible legal instruction that also exceeds her expertise; (2) Cockrell’s testimony
regarding industry custom and usage is unreliable and lacks sufficient basis in evidence; and (3)
Donohue’s damages estimates should be excluded because they are based on Cockrell’s opinion,
are based on an unscientific methodology, and rely on unfounded assumptions.

133

See Kindler Rep. ¶¶ 51, 70 (ECF No. 365-2).

134

Arntson Dep. 194:23-196:1, 197:22-199:1 (ECF No. 365-8).

135

See, e.g., Pls.’ Daubert Memo. at 22 (“The Light Rail Zipper lacks the advantages of the
patented Zippers and is extremely dissimilar in appearance and function.”).
136

Pls.’ Daubert Memo. at 19-22 (ECF No. 365).

137

With regard to the Talon AquaTight Zipper, Plaintiffs’ motion to exclude testimony that this
zipper is a non-infringing alternative is denied without prejudice. In order to determine whether this
zipper infringes on the ‘214 Patent, the Court would have to construe the meaning of the word “on” in the
claims. Because Defendants have offered testimony regarding other non-infringing alternatives, however,
a decision regarding this zipper need not be decided at summary judgment. Accord In re Scotts EZ Seed
Litig., 2017 U.S. Dist. LEXIS 125621, at *44-45 (S.D.N.Y. Aug. 7, 2017).

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With a few exceptions, these motions are denied. Portions of Cockrell’s report summarize
evidence beyond his expertise and personal knowledge and are, therefore, excluded. But his
opinions stemming directly from his experience in the outerwear industry are not unreliable and
are admitted. Likewise, Bagley’s report does not stray from her expertise and is admissible. And
although Defendants offer many arguments as to why Donohue’s calculations are imperfect,
none of the alleged defects makes his calculations inadmissible.
I.

Defendants’ Motion to Exclude Bagley
Margo A. Bagley is a law professor who has offered an expert report on the distinctions

between various’ nations patent laws and whether they differ in any meaningful way for the
purposes of this case. Defendants move to exclude the entirety of Bagley’s report on the grounds
that it: (1) consists of impermissible legal instructions; and (2) is based on unreliable facts. The
motion is granted in part.
Defendants argue, correctly, that expert testimony to legal standards is generally
inadmissible because such testimony infringes on the Court’s obligation to instruct the jury on
applicable law. 138 For that reason, Bagley’s testimony should not be presented to the jury. 139

138

See Bethea v. Equinox Fitness Club, 544 F. Supp. 2d 398, 399 (S.D.N.Y. 2008) (excluding
expert testimony because “much of [his] report is simply his view of the appropriate legal standards,
which is the Court’s province”); Highland Capital Mgmt., L.P. v. Schneider, 379 F. Supp. 2d 461, 470
(S.D.N.Y. 2005) (expert’s discussion of governing law “is inadmissible because ‘it is not for witnesses to
instruct the jury as to applicable principles of law’”) (quoting Marx & Co. v. Diner’s Club Inc., 550 F.2d
505, 509-10 (2d Cir. 1977)). This rule also applies to foreign law. See Linde v. Arab Bank, PLC, 920 F.
Supp. 2d 282, 286 (E.D.N.Y. 2011); see, e.g., Nieves-Villanueva v. Soto-Rivera, 133 F.3d 92, 99 (1st Cir.
1997) (“Even in the case of foreign law, under modern practice the testimony is generally given to the
judge, outside of the presence of the jury, and is meant to assist the judge in determining the appropriate
instructions.”).
139

It is entirely unclear, though, if Plaintiffs even intended for Bagley to testify before the jury.
See Pls.’ Daubert Opp. at 16 (ECF No. 378) (“Her testimony will be of great assistance to the Court in
determining the patent laws of Japan, Taiwan, Europe, Hong Kong, and Canada and is not intended to
usurp the Court’s function.”).

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Courts, however, “make one exception to this strict rule – when interpreting foreign law,
expert legal opinion may be allowed.” 140 Defendants do not argue that Bagley lacks the requisite
expertise to produce what is, in their own words, a “40-page legal treatise on comparative
law.” 141 Indeed, her report will be helpful for the Court in determining foreign law, and her
testimony at a hearing on jury instructions would, if desired, be appropriate.
Bagley may, however, testify to the Court as set forth in paragraph 126 in which she
concludes that: (1) “I would expect the courts in Canada, Japan, Taiwan, Hong Kong, and the
relevant European courts to construe the phrase ‘water resistant’ in the same way as in the U.S.”;
and (2) “I would also expect courts in these same countries, based on the same evidence of the
literal presence of each element of the product claim in the YKK products . . . to reach the same
conclusion concerning YKK’s products being within the scope of the relevant claims of the
patents.” Defendants argue that these conclusion are improper because she is not a technical
expert and because she never examined the allegedly infringing products to see if they fall within
the foreign patents’ claims. 142
This motion is denied. Certainly, if Bagley were testifying that the accused products do
fall within the foreign patents’ claims, then Defendants would have a point. But she says no such
thing. Rather, she is—helpfully—testifying that if a court in one jurisdiction were to find that

140

In re Initial Public Offering Sec. Litig., 174 F. Supp. 2d 61, 65 (S.D.N.Y. 2001) (citing Marx
& Co., Inc. v. Diners’ Club, Inc., 550 F.2d 505, 510 (2d Cir. 1977)); see also Winn v. Schafer, 499 F.
Supp. 2d 390 (S.D.N.Y. 2007) (“A court may thus consider a foreign law expert’s opinion even on
ultimate legal conclusions.”); 1 McCormick on Evidence § 12 (7th ed. 2016) (“Regardless of the rule
concerning opinions on ultimate facts, at common law courts do not allow opinion on a question of law,
unless the issue concerns foreign law. Nor do the Federal Rules of Evidence permit opinions on law
except questions of foreign law.”) (emphasis added).
141

Defs.’ Daubert Memo at 16 (ECF No. 367).

142

Id. at 17-18.

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one of YKK’s products infringed on Plaintiffs’ patent in that jurisdiction, then she would expect
the others to reach the same conclusion if presented with the same evidence. Defendants may
have some reasons for why they think this opinion is incorrect, but the Court is perfectly capable
of weighing Defendants’ arguments against Bagley’s testimony.
Thus, Defendants’ motion is granted in part. Bagley may not testify before the jury. But
her report is not excluded at summary judgment, and her testimony may be appropriate during
any hearings relating to the application of foreign patent law in this case.
II.

Defendants’ Motion to Exclude Cockrell
David W. Cockrell is a clothing designer, creative director, and brand manager who has

worked in the outerwear industry for 25 years. 143 In his report, he offers a definition for “high
end outerwear” as understood in the industry. He then uses that definition to determine whether
specific outerwear items incorporating YKK’s zippers qualify as “high end outerwear.” He also
testifies that Uretek’s zipper was commercially successful, that there were no recognized
alternatives in the industry, and that companies would not have purchased the accused zippers
from YKK if they had known that YKK was infringing upon Uretek’s patents.
Defendants move to exclude all of this testimony, arguing: (1) his opinions defining
“high end outerwear” and applying that definition to specific items are based on an unreliable
and undisclosed method; (2) he is not qualified to testify that there were no alternative zippers;
and (3) that he is not qualified to testify to what companies would have done and, in the
alternative, his opinion lacks a basis in fact.
Defendants’ motion is granted in part. Although Defendants have identified flaws in
Cockrell’s definition of high end outerwear, that goes to weight, not admissibility. Regarding the

143

Cockrell Rep. ¶ 3 (ECF No. 386-6).

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alternative zippers, Cockrell may testify to his personal understanding of beliefs shared in the
industry, but he also may not review internal YKK documents supporting his testimony. And as
for what other companies would have done if they had known YKK’s zippers infringed on a
patent, this testimony is too hypothetical to be admitted. Each of these issues is discussed below.
A. Cockrell’s First Three Opinions Regarding High End Outerwear
Defendants move to exclude the first three sections Cockrell’s report that include: (1) the
portion in which he offers definitions for low end, mid range, and high end outerwear, contained
in paragraphs 6 – 34; (2) the portion of his report in which he applies his definition to determine
which goods incorporating YKK’s water-resistant zippers were high end outerwear; and (3) the
portion of his report in which he concludes that certain brand companies sell some high end
outerwear. Defendants argue that his opinions must be excluded because he has not fully
disclosed his methodology and that, in any event, his methodology is unreliable. This motion is
denied.
Although Defendants make grist from Cockrell’s alleged 50% error rate, the first opinion
on the definitions of the various market segments is proper and admissible. During his
deposition, Cockrell was unable to look at an item of clothing and reach the same conclusion as
his report five out of ten times. Certainly, that error rate is high, and it would be a valid basis to
exclude an expert with scientific knowledge under Daubert. 144 But an opinion regarding the
definition of an industry term does “not present the kind of ‘junk science’ problem that Daubert
[is] meant to address.” 145 For that reason, it would be an error to require the definition to abide

144

See, e.g., Amorgianos v. National R.R. Passenger Corp., 303 F.3d at 268 (7th Cir. 2002)
(affirming district court’s exclusion of expert testimony regarding injury causation and exposure to the
chemical xylene because the expert “failed to apply his own methodology reliably”).
145

Iacobelli Constr. v. Cty. of Monroe, Rochester Pure Waters Dist., 32 F.3d 19, 25 (2d Cir.
1994) (citation omitted).

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by the strictures of the scientific method. 146 Instead, when an expert offers an opinion on an
industry term, the relevant inquiry is whether that expert has sufficient experience. 147 Cockrell,
who has 25 years of experience in the water resistant outerwear industry, has enough experience
to make his opinion of industry terms admissible. 148 Defendants’ belief that his application of
that definition is inconsistent goes “to the weight of the evidence, not to its admissibility.” 149 The
same is true of his opinion applying the definition to specific items of clothing. 150
As for Cockrell’s third opinion regarding brands that sell some high end outerwear, it is
impossible to rule on that motion at this time. Neither Plaintiffs nor Defendants have attached
Exhibit 16 of his report that contains Cockrell’s actual opinion on the matter. 151 Thus, this
motion is denied without prejudice to renewal. 152

146

Id. (reversing district court’s dismissal of the opinions of several experts testifying to industry
custom and usage under Daubert because “reliance on Daubert was misplaced”).
147

SR Int’l Bus. Ins. Co. v. World Trade Ctr. Props., LLC, 467 F.3d 107, 132-34 (2d Cir. 2006)
(affirming lower court’s admission of expert witness’ testimony to custom and usage despite arguments
that he “could not offer a consistent, reliable methodology by which he applied his opinions” because the
expert “testified that he had over 30 years of experience in the insurance industry (as both an underwriter
and a broker) and he was familiar with practices in the industry”).
148

See, e.g., id.

149

SR Int’l Bus. Ins. Co., 467 F.3d at 134 (citation omitted); accord Restivo v. Hessemann, 846
F.3d 547, 580 (2d Cir. 2017) (“If, as Volpe claims, those terms have no special law enforcement meaning,
then Volpe should have introduced testimony to that effect, expert or otherwise. That does not render
Fischer’s testimony inadmissible.”).
150

Cockrell’s entire opinion recording whether hundreds of items are high end outerwear,
however, may potentially be too cumulative to be presented to the jury. See Fed. R. Evid. 403. That
determination would more appropriately be made once Plaintiffs have indicated how exactly they intend
to present their case.
151

See Cockrell Rep. (ECF No. 368-1).

152

Accord In re Scotts EZ Seed Litig., 2017 U.S. Dist. LEXIS 125621, at *44-45 (S.D.N.Y. Aug.

7, 2017).

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B. Non-Infringing Alternatives
Cockrell’s fourth opinion is that Arc’teryx’s—and later, Uretek’s and YKK’s—water
resistant zippers have been highly successful, and that the industry does not view any of the
competitors to be a viable substitute. 153 Defendants move to exclude this opinion, arguing that
Cockrell is unqualified to say there are no non-infringing alternatives and that, in any event, his
opinions are not based on the consideration of all relevant evidence. This motion is denied in part
and granted in part.
Defendants’ argument rests on a sleight of hand. They say that Cockrell cannot reliably
testify that there are no viable non-infringing alternatives to the ‘214 Patent because he has not
reviewed the patent himself and because he does not know how to test for water resistance. 154
And they have a point; a person could not reliably testify that other zippers are not infringing or
water resistant without having that foundation of knowledge. But Cockrell says no such thing.
Instead he testifies, based on his lengthy experience in the industry, that the zipper invented by
Uretek has been a huge success in the industry, and that there are no zippers “which the
outerwear industry has recognized as a legal, functioning alternative.” 155 He is not testifying that
no such zipper exists; that would be beyond his knowledge. He is testifying that people in the
industry have not recognized another zipper to be both a legal and functioning alternative. So
long as Cockrell’s testimony is cabined to his personal knowledge in that way, it is proper and
admissible.

153

Cockrell Rep. ¶¶ 44-53 (ECF No. 368-1).

154

Defs.’ Daubert Memo. at 11-2 (ECF No. 367).

155

Cockrell Rep. ¶ 51 (ECF No. 368-1) (emphasis added).

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The remainder of his fourth opinion is, however, excluded. In the remainder, he goes over
internal YKK documents and testifies that the documents suggest that YKK agrees with his
conclusion. 156 This testimony is nothing more than “a narrative of the case which a juror is
equally capable of constructing.” 157 Such a narrative, unmoored from the personal experience of
the speaker, is reserved for closing argument; any expert testimony to that effect is excluded. 158
C. Consumer Confusion
In his fifth opinion, Cockrell testifies that any companies in the industry would have
required that YKK sell them zippers laminated by Uretek if YKK had advised them of YKK’s
licensing agreement. To support his claim, he refers to his decades of experience as well as
several of YKK’s internal documents in which YKK or others state that they would prefer not to
infringe on any intellectual property. 159
This testimony is inadmissible. Mr. Cockrell’s opinion comes from two sources, neither
of which are admissible expert testimony. First, he cites an abstract belief that “most, if not all,
of the brand companies purchasing YKK-made Water Resistant Zippers for use in either the
High-End Outerwear or Luggage Excluded Markets would have required that YKK instead sell
them the Water Resistant Zippers laminated by Uretek if YKK had advised its customers of
YKK’s limited rights in this regard.” 160 Cockrell may have extensive experience in the industry,
but this kind of hypothetical speculation is not proper for any expert; to say to the jury that the
purchasers of YKK’s zippers would have acted differently requires some kind of methodology

156

See Cockrell Rep. ¶¶ 46-50, 52-53 (ECF No. 368-1) (emphasis added).

157

In re Rezulin Prods. Liab. Litig., 309 F. Supp. 2d 531, 551 (S.D.N.Y. 2004) (citation omitted).

158

See Snyder v. Wells Fargo Bank, N.A., 2012 WL 4876938, at *4 (S.D.N.Y. Oct. 15, 2012)
(preventing an expert to give a summation of evidence from the witness stand).
159

Cockrell Rep. ¶¶ 56-59, 66-74 (ECF No. 368-1).

160

Cockrell Rep. ¶¶ 56-59, 66-74 (ECF No. 368-1) (emphasis added).

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other than conjecture. 161 Perhaps Cockrell could testify that he would have only purchased
Uretek-laminated zippers from YKK, but he cannot because he in fact has continued to use
YKK-laminated zippers in the high end outerwear market. 162
As for the portions of his opinion that comb through various internal documents, this
testimony is also inadmissible. Just like his review of internal YKK documents in his fourth
opinion, Cockrell’s testimony here is nothing more than disguised argument from Plaintiffs’
attorneys. It is excluded. 163
III.

Defendants’ Motion to Exclude Donohue
James J. Donohue is an accountant who has authored Plaintiffs’ damages report. In his

report, he determines Plaintiffs’ lost profits and disgorgement measure of damages by looking at
YKK’s actual sales into unlicensed, and therefore infringing, markets. Defendants move to
exclude portions of his report, arguing: (1) he relies on Cockrell’s unreliable definition of “high
end outerwear” and lack of a non-infringing alternative; (2) his damages calculations rely on an
unreliable causation assumption; (3) he relies upon a non-representative sample of sales to some
companies to reach conclusions regarding all of YKK’s customers; and (4) he relies upon
unreliable sales data cataloguing YKK’s luggage sales. These arguments are unavailing.

161

Accord Tovey v. Nike, Inc., 2014 U.S. Dist. LEXIS 93905, at *24-25 (N.D. Ohio Apr. 2,
2014) (excluding expert testimony to consumer confusion not based on a consumer survey because there
was no “reliable support for her conclusion, [and the] . . . opinion amounts to ‘only speculation, which is
generally inadmissible’”).
162

See Cockrell Dep. 23:10-25:4 (ECF No. 368-7).

163

Accord In re Rezulin Prods. Liab. Litig., 309 F. Supp. 2d 531, 551 (S.D.N.Y. 2004) (citation
omitted); see also Snyder v. Wells Fargo Bank, N.A., 2012 WL 4876938, at *4 (S.D.N.Y. Oct. 15, 2012).

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A. Reliance on Cockrell
Defendants move to exclude Donohue’s lost profits analysis because, they argue, it is
based on the inadmissible testimony from Cockrell regarding the definition of “high end
outerwear” and the existence of non-infringing alternative products. 164 But Cockrell’s opinions
are not excluded, and so the motion is moot. This motion is denied. 165
B. Donohue’s Causation Opinions
Defendants argue that Donohue’s lost profit conclusions do not justify his belief that “but
for” YKK’s actions, Uretek would have laminated millions more meters of zippers for YKK.
Defendants’ challenge goes to the weight, not the admissibility, of Donohue’s opinion. One
permissible means of proving lost profits under patent law is to establish: (1) the demand for the
zippers; (2) the absence (or effect of) acceptable, non-infringing alternative products; (3)
Plaintiffs’ manufacturing capacity to exploit the demand; and (4) the gross profits Plaintiffs
would have realized. 166 That is exactly the mode of Donohue’s analysis. He first accepts the
premise that there were no non-infringing alternatives based on Cockrell’s testimony, which is
admissible for the reasons discussed above. He then comes up with the demand for the zippers,
Plaintiffs’ manufacturing profits, and the resulting gross profits based on data. Defendants may
believe that this could never have happened because Uretek’s lamination-costs were too high, but
this does not render his opinion inadmissible; given YKK’s large profit margin on the zippers, it
is not unreasonable for Donohue to conclude that YKK could have maintained sales volume

164

Defs.’ Daubert Memo. at 19 (ECF No. 367).

165

Furthermore, Donohue’s analysis would not necessarily be inadmissible even if Cockrell’s
opinion was excluded. An expert may rely on otherwise inadmissible testimony. See Deflecto, LLC v.
Dundas *Jafine Inc., 2015 WL 6755318, *3 (W.D. Mo. 2015).
166

Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1285 (Fed. Cir. 2017) (citing
Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 1156 (6th Cir. 1978)).

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while losing some of its margin to Uretek’s higher lamination costs. Thus, Defendants may
present this theory to the jury through cross-examination or in rebuttal, but Donohue’s opinion is
not inadmissible. 167
C. Donohue’s Statistical Sampling and Extrapolation
Defendants move to exclude Donohue’s estimate of water-resistant zippers sold by YKK
into the high end outerwear market, arguing that he used a nonrandom and unreliable sampling
method. Because Donohue has a basis for concluding that his data was representative of all
customers, this argument goes to weight and not admissibility. The motion is denied.
YKK did not track zipper sales into the “high end outerwear market” as defined in the
licensing agreement. 168 Donohue nevertheless constructed an estimate of those sales using two
data sets, one from YKK and one from YKK’s customers. He first identified a possible universe
of high end outerwear sales by looking at YKK’s customer segment and zipper use data. He
focused on sales to customers identified as “high-function” or “functional,” which YKK defined
as those who produce goods with a functional purpose, including outdoor and sports apparel. 169
He then identified the subset of sales to those customers that YKK tagged with a usage code
associated with outerwear. 170 This process identified 77.7 million meters of zippers sold to

167

The parties offer some slight argument that Donohue’s testimony may or may not be relevant
for Plaintiffs’ theory of lost profits for breach of contract, especially for any damages after October 31,
2014. Given how lightly briefed this question is, a motion limiting Donohue’s testimony regarding breach
of contract is denied without prejudice at this time. Accord In re Scotts EZ Seed Litig., 2017 U.S. Dist.
LEXIS 125621, at *44-45 (S.D.N.Y. Aug. 7, 2017).
168

See Donohue Rep. ¶ 72 (ECF No. 386-3).

169

See Donohue Rep. at 36 (ECF No. 386-3). During the relevant period, YKK went from
classifying its customers into four market segment to nine market segments. See id. The “Hi-Function”
customers were reclassified as “Functional,” but the category’s definition does not appear to have
changed. See id.
170

See Donohue Rep. ¶¶ 90-1 (ECF No. 386-3).

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functional customers for use in outerwear. 171 Donohue then relied on Cockrell’s analysis of
product information provided in discovery by YKK’s customers. Plaintiffs were able to obtain
that information for twelve customers (the “Discovery Customers”) who accounted for roughly
30% of YKK’s water-resistant zipper sales. 172 Using Cockrell’s determination of which products
constituted high end outerwear, Donohue then concluded that 56% of YKK’s sales to the
Discovery Customers went into high end outerwear. 173
Aside from Donohue’s reliance on Cockrell’s opinion, Defendants do not object to
Donohue’s conclusions with regard to the Discovery Customers. Instead, Defendants object to
Donohue’s extrapolation from that data to conclude that 56% of all functional outerwear sales
went into high end outerwear. They argue that he has no basis for assuming that the Discovery
Customers were representative of YKK’s other customers.
Defendants are correct that an expert cannot extrapolate from a nonrandom sample
without a reason to believe the sample is in fact representative of the whole population. 174 But
Donohue does offer a justifiable reason: all of the customers were identified as “functional,” and
they all purchased the same water-resistant zippers for use in outerwear. 175 In addition to that
similarity, he reviewed the overall product mix of both sets in order to be sure that the “zipper
171

See Donohue Rep. at 50 (ECF No. 386-3).

172

Donohue’s report identifies twelve discovery customers: Berghaus, Columbia, Harley
Davidson, Helly Hansen, Marmot, Montbell, Mountain Hardwear, Nike, the North Face, Patagonia,
Spyder, and Under Armour. Donohue Rep. at 51 (ECF No. 386-3). Since then, Plaintiffs have received
product data from Arc’teryx. See Donohue Dep. 114:9-115:3 (ECF No. 368-9). For the purposes of this
opinion, I will only discuss the data produced in Donohue’s report.
173

See Donohue Rep. at 52.

174

See, e.g., Compania Embotelladora Del Pacifico, S.A. v. Pepsi Cola Co., 650 F. Supp. 2d 314,
320 (S.D.N.Y. 2009) (excluding opinion that transshipping occurred in same proportion outside of the
studied sales territories because expert offered no basis for assumption that the studied sales territory was
representative).
175

See Donohue Rep. ¶¶ 114, 119 (ECF No. 368-3).

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pricing and product mix . . . were also similar.” 176 His conclusion, therefore, is not the kind of
statistical junk science that courts have excluded under Daubert. 177
Unless the movant can show a reason that the assumption of representativeness is
unsound, courts routinely allow experts to extrapolate from a nonrandom sample. 178 Because
Defendants have not shown that his assumption is unsound or that his sample is in fact
unrepresentative, the motion is denied. 179
D. Donohue’s Lost Profits Estimates for Luggage
Finally, Defendants argue that Donohue’s calculation of lost profits for the luggage
market are unreliable. Donohue looked at YKK’s internal data, which tagged certain sales as
luggage or “sports.” He then looked at zipper sales for luggage while excluding sales with the
“sports” tag. Defendants argue this was unreliable because he did not engage in any further

176

Donohue Rep. ¶ 114 (ECF No. 368-3); see also id. ¶¶ 119 (“This approximation also
considered the many similarities between these two groups of customers.”).
177

See, e.g., Pepsi Cola Co., 650 F. Supp. 2d at 320 (S.D.N.Y. 2009).

178

Alaska Rent-A-Car, Inc. v. Avis Budget Grp., Inc., 738 F.3d 960, 968-70 (9th Cir. 2013)
(finding it was not error to admit expert who used data from Juneau’s rental car market, which constituted
5% of the statewide market, to reach conclusions regarding Alaska’s rental car market because the “expert
gave reasons for his use of all these comparisons, such as by pointing out the clarity with which the
Juneau market could be examined”); In re Countrywide Fin. Corp. Mortgage-Backed Secs. Litig, 984 F.
Supp. 2d 1021, 1032-1033 (C.D. Ca. 2013) (dismissing argument that sample of loans was nonrandom
and unreliable because “the loan sample and the replacement loan sample were tested against the SLG
population on eleven variables to ensure that the samples accurately represented the SLG population”);
Abrams v. Ciba Specialty Chems. Corp., 2010 U.S. Dist. LEXIS 19157, at *34 (S.D. Ala. Mar. 2, 2010)
(rejecting argument that sampling was not random because expert’s sampling was consistent with
“specific standard US Environmental Protection Agency methods” and because movant offered no reason
why the nonrandom sampling was “inconsistent with accepted scientific methodology).
179

They have not, for example, offered any statistical metrics—such as an estimated confidence
interval—to demonstrate that his methodology is statistically unsound and should be excluded. Contra
Chavez v. IBP, Inc., 2004 U.S. Dist. LEXIS 28838, at *33-34 (E.D. Wash. Dec. 8, 2004) (finding expert
testimony was based on unreliable sampling after rebuttal expert offered credible testimony that “because
of the small sample size, the numbers were overly malleable, depending upon what midpoint was
chosen”).

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testing of whether those sales were in fact used for luggage and not sports bags. This argument is
unavailing. Defendants offer no reason to believe that that their own internal data tags were
inaccurate or were used in a fashion that differed from the definitions used in the licensing
agreement. At some point experts, like all people, must make some epistemological assumptions,
and it is not per se unreliable to use YKK’s internal sales data coding. If Defendants have
evidence or argument that this sales data is unreliable, then that goes to the weight, not the
admissibility.
CONCLUSION
For the reasons discussed above, both Plaintiffs’ and Defendants’ Daubert motions are
granted in part and denied in part. The Clerk of the Court is respectfully requested to terminate
the motions at ECF Nos. 359, 361, 366, and 401.
SO ORDERED.

Dated: March 19, 2019
New York, New York

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