UHS of Delaware, Inc. v. United Health Services, Inc.

Filing 277

ORDER granting in part and denying in part UHS Delaware's MIL 176 , as set forth in Paras 2 & 3, herein. (See order for complete details.) Signed by Chief Judge Christopher C. Conner on 5/10/17. (ki)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
UHS OF DELAWARE, INC.,
Plaintiff
v.
UNITED HEALTH SERVICES,
INC., et al.,
Defendants

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CIVIL ACTION NO. 1:12-CV-485
(Chief Judge Conner)

ORDER
AND NOW, this 10th day of May, 2017, upon consideration of the motion
(Doc. 176) in limine by plaintiff UHS of Delaware, Inc. (“UHS Delaware”), seeking
to exclude testimony of Gary Krugman, Esquire (“Krugman”), an expert witness on
the subject of trademark law retained by defendants United Health Services, Inc.,
United Health Services Hospitals, Inc., Professional Home Care, Inc., Twin Tier
Home Health, Inc., Ideal Senior Living Center, Inc., Ideal Senior Living Center
Housing Corporation, Inc., Delaware Valley Hospital, Inc., and United Medical
Associates (collectively “United Health Services”), and the motion having been fully
briefed and all parties thus having been heard by the court,1 (Docs. 177, 216, 226),
and the court observing that, pursuant to Federal Rule of Evidence 702, a witness

1

United Health Services asserts as a threshold matter that UHS Delaware‟s
motion is untimely. United Health Services cites the court‟s case management
order for the proposition that all motions in limine based on Daubert must be filed
within 30 days of receipt of the subject expert report. (Doc. 216 at 3). The court‟s
order applies this accelerated deadline only to those motions “which require a
Daubert hearing.” (Doc. 38 ¶ 6(b)). UHS Delaware does not seek a Daubert
hearing, nor do its arguments compel one. The instant motion is timely.

qualified as an expert may testify as to their opinion when: the expert‟s specialized
knowledge will assist the trier of fact in understanding the evidence or determining
a fact of consequence; the expert‟s testimony is grounded in sufficient facts or data;
and the expert‟s opinion derives from reliable principles and methods and results
from a reliable application of said principles to the facts of the case, FED. R. EVID.
702; see Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 588-89 (1993); In re
Paoli R.R. Yard PCB Litig., 35 F.3d 717, 741-43 (3d Cir. 1994), and that Rule 702 has
thus been described by the Third Circuit as embodying “a trilogy of restrictions on
expert testimony,” to wit: qualification, reliability, and fit, Schneider ex rel. Estate
of Schneider v. Fried, 320 F.3d 396, 404 (3d Cir. 2003) (citing In re Paoli, 35 F.3d at
741-43), and the court, addressing each of Rule 702‟s requirements in turn, noting:
first, with respect to Krugman‟s qualifications, that UHS Delaware does not dispute
that Krugman is qualified to testify in the area of trademark law generally and
procedure specifically, (see Doc. 226 at 1-2), and the court finding, upon review of
Krugman‟s credentials and pursuant to the Third Circuit‟s mandate that courts
“interpret the qualification requirement „liberally,‟” Waldorf v. Shuta, 142 F.3d 601,
625 (3d Cir. 1998), that Krugman is well-qualified to testify as an expert witness on
the subjects of trademark law and procedure; second, with respect to the reliability
of Krugman‟s principles, methods, and application, that UHS Delaware does not
suggest that Krugman‟s report or anticipated testimony are unreliable, (see Doc.
226 at 1-2), and, following an independent review of Krugman‟s report, the court
finding that same is grounded in sound methodology and an application of that
methodology to the facts of this case and is thus reliable; and third, with respect
2

to the fitness of Krugman‟s report and testimony, the court observing that the
question of fitness “goes primarily to relevance,” Daubert, 509 U.S. at 591, and, that
Rule 702 embraces a “liberal policy of admissibility,” under which it is preferable to
admit any evidence that may assist the factfinder, Pineda v. Ford Motor Co., 520
F.3d 237, 243 (3d Cir. 2008) (quoting Kannankeril v. Terminix Int‟l, Inc., 128 F.3d
802, 806 (3d Cir. 1997)), and finding that Krugman‟s anticipated testimony in two
specific areas is relevant to the likelihood of confusion analysis, namely the court‟s
assessment of the strength of UHS Delaware‟s marks, and will be helpful to the
court in the upcoming trial, that is: Krugman‟s opinions concerning (i) the effect of
a crowded market on the strength of a mark and (ii) the effect of policing (or failing
to police) a mark on the strength thereof; but finding that the balance of Krugman‟s
anticipated testimony concerning (i) practice and procedure of the United States
Patent and Trademark Office when examining a trademark application and (ii) the
meaning and implications of a mark obtaining “incontestable” status, both of which
are intended to “provide the jury a helpful understanding of a part of the case
background,” (Doc. 216 at 12), are neither relevant nor helpful sub judice, as the
court is the trier of fact; and further, concerning UHS Delaware‟s argument that
Krugman‟s testimony has the potential to mislead, prejudice, or confuse, the court
noting that, in the bench trial context, Rule 403 is generally inapplicable, because a
judge is unlikely to be misled or confused by legal or factual nuance and is able to

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objectively assess probative value and reject any improper inferences, see Suter v.
Gen. Accident Ins. Co. of Am., 424 F. Supp. 2d 781, 790-91 (D.N.J. 2006) (citations
omitted), it is hereby ORDERED that:
1.

UHS Delaware‟s motion (Doc. 176) in limine is GRANTED in part and
DENIED in part as set forth in the following paragraphs.

2.

Krugman‟s testimony shall be admissible at trial to the extent his
testimony concerns the subjects of (i) the effect of a crowded market on
the strength of a mark and (ii) the effect of policing (or failing to police)
a mark on the strength of that mark.

3.

Krugman‟s testimony shall be inadmissible at trial to the extent
his testimony concerns (i) the practice and procedure of the United
States Patent and Trademark Office when examining a trademark
application and (ii) the legal meaning and implications of an
“incontestable” designation.
/S/ CHRISTOPHER C. CONNER
Christopher C. Conner, Chief Judge
United States District Court
Middle District of Pennsylvania