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

Filing 279

ORDER granting in part & denying in part UHS Delaware's MIL 186 , as set forth in Paras 2-8 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. 186) in limine 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 herein “defendants”), seeking to preclude and to strike certain portions
of the expert reports and proposed expert testimony offered by plaintiff UHS of
Delaware, Inc. (“UHS Delaware”), wherein defendants argue: first, that rebuttal
experts Zachary Dyckman, Ph.D. (“Dr. Dyckman”), and Robert F. Cissel (“Cissel”)
may testify as rebuttal witnesses only and may not testify during UHS Delaware’s
case in chief; second, that non-rebuttal portions of Dr. Dyckman’s and Cissel’s
expert reports must be stricken; third, that rebuttal experts may not testify as to
issues on which UHS Delaware bears the burden of proof, viz., the Lapp1 factors
and the ultimate likelihood of confusion inquiry; fourth, that experts may not testify

1

Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983).

about the state of the law or offer legal opinion; and fifth, that UHS Delaware’s
damages expert must be precluded from offering rebuttal testimony at trial because
she did not submit a rebuttal report, (Doc. 187 at 4-15), and the motion having been
fully briefed and all parties having been heard by the court, (Docs. 187, 209, 230),
and the court observing that, pursuant to Federal Rule of Evidence 702, a witness
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, see FED. R.
EVID. 702; and it appearing that defendants oppugn not the rebuttal experts’
qualifications, or the reliability or relevance of their testimony, but rather the
propriety of offering their reports and testimony in “rebuttal” rather than as initial
reports, (Doc. 187 at 4-14; see Doc. 143), and taking defendants’ points in turn: first,
as to defendants’ argument that Dr. Dyckman and Cissel may only testify during the
rebuttal case, the court noting that UHS Delaware agrees that its rebuttal witnesses
will testify during the rebuttal case alone and will not testify during its case in chief,
(Doc. 209 at 1); second, as to defendants’ request that the court strike non-rebuttal
portions of Cissel’s report2 and preclude testimony on non-rebuttal opinions, the
court finding that certain of Cissel’s opinions extend beyond rebuttal—to wit: his
2

Defendants frame this section of their brief as a challenge to both rebuttal
reports for containing “non-rebuttal” opinions. (See Doc. 187 at 5). Defendants fail
to identify any portion of Dr. Dyckman’s report which they deem beyond the scope
of proper rebuttal. (See Doc. 187 at 5-6; Doc. 230 at 2-4). The court considers this
argument as pertains Cissel alone.
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conclusions that (i) UHS Delaware’s marks are “widely regarded,” (ii) defendants
are “infringers” of UHS Delaware’s marks, and (iii) confusion is “inevitable”— and
neither directly nor indirectly respond to the opinions of defendants’ expert, Gary
Krugman, Esquire (“Krugman”), and must thus be excluded at trial, but that Cissel
properly responds to Krugman’s opinions regarding strength of UHS Delaware’s
marks, specifically (i) the effect of a crowded market and (ii) the effect of policing (or
failing to police) a mark on the strength thereof,3 and as to defendants’ request that
the court strike the improper portions of the reports, the court noting that UHS
Delaware will not enter the reports into evidence at trial, (Doc. 209 at 3-4), mooting
the need to strike same; third, as to defendants’ argument that Dr. Dyckman and
Cissel may not testify as to any Lapp factor, because UHS Delaware bears the
burden of proof with respect to the likelihood of confusion inquiry and elected not
to retain initial experts in support of that burden, and may not now use rebuttal
experts to “sneak in” such evidence, the court observing that “it is not improper to
admit evidence in rebuttal which also supports plaintiffs’ case in chief” when such
evidence “contradicts evidence admitted in defendant’s case in chief,” Olsen v.
United States, 521 F. Supp. 59, 69 (E.D. Pa. 1981), and that UHS Delaware must
have the opportunity to respond to evidence and opinions rendered in the first
instance by defendants’ experts, and thus finding that Cissel may testify in rebuttal
to Krugman as to the topics identified supra, and Dr. Dyckman may testify in
3

The parties dispute whether Krugman actually reaches a conclusion on the
issues of mark strength or whether a crowded market or a failure to police against
infringement weaken UHS Delaware’s marks. Krugman does not state unequivocal
conclusions, but he does imply them. Defendants may offer Cissel’s testimony in
answer to Krugman’s implicit conclusions.
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rebuttal to defendants’ expert, Dr. John Schneider (“Dr. Schneider”), as to the
following: competition in the healthcare market, generally and specific to
behavioral health facilities, and as between not-for-profit and for-profit healthcare
systems, each of which directly responds to Dr. Schneider’s opinions,
notwithstanding that said testimony may support UHS Delaware’s case in chief or
inform the court’s Lapp factor analysis,4 see Olsen, 521 F. Supp. at 69, but that Dr.
Dyckman need not rebut Dr. Schneider’s opinion concerning profit margin
differentiation among not-for-profit and for-profit healthcare systems or financial
disincentives to patient choice resulting from network restrictions because the
court precluded Dr. Schneider’s opinion on the same topics by separate order of
today’s date; fourth, as to defendants’ argument that Dr. Dyckman and Cissel may
not testify about the law or offer legal opinion, the court observing that that UHS
Delaware agrees that its rebuttal witnesses will not testify about the law or provide
legal conclusions, (Doc. 209 at 10-11), and that such rebuttal is unnecessary given
the court’s separate order of today’s date excluding Krugman’s contextual
testimony on issues of trademark law and procedure; and fifth, as to defendants’
argument that Laura B. Stamm (“Stamm”), UHS Delaware’s affirmative damages
expert, must be precluded from providing rebuttal testimony at trial because she
did not submit a rebuttal expert report, the court observing that UHS Delaware

4

Defendants assert that, during his deposition, Dr. Dyckman indicated a
willingness to explore other Lapp factors, such as the level of care consumers use
in selecting healthcare services, if asked at trial. (See Doc. 187 at 9). To the extent
Dr. Dyckman intends to offer any opinion beyond that expressed in his rebuttal
report and authorized herein, that opinion shall be inadmissible at trial. See FED.
R. CIV. P. 26(a)(2)(A)-(B).
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agrees not to “extend [Stamm’s] testimony” beyond her initial report, but that
Stamm may endeavor to respond to a “few points of disagreement she had” with
defendants’ expert, (Doc. 209 at 12-13), and the court concluding that UHS
Delaware may call Stamm in both its case in chief and its rebuttal case but that
Stamm’s testimony must be limited to the facts, data, and reasoning contained in
the four corners of her initial report, see FED. R. CIV. P. 26(a)(2)(A)-(B); and lastly,
the court determining that, because this matter shall proceed as a bench trial rather
than before a jury, any further nuance or objection as pertains the parties’ experts
may be addressed at the time of trial, it is hereby ORDERED that:
1.

UHS Delaware’s motion (Doc. 186) in limine is GRANTED in part and
DENIED in part as set forth in the following paragraphs.

2.

Dr. Dyckman and Cissel shall not testify during UHS Delaware’s case
in chief and may testify during the rebuttal case only.

3.

Cissel’s opinions that UHS Delaware’s marks are “widely regarded,”
that defendants are “infringers” of UHS Delaware’s marks, and that
consumer confusion is “inevitable” are improper rebuttal and shall be
inadmissible at trial.

4.

Cissel’s commentary on and opinions concerning the general nature of
trademark law shall be inadmissible at trial.

5.

Cissel’s opinions regarding the strength of UHS Delaware’s marks,
specifically the effect of a crowded market and the effect of policing (or
failing to police) a mark on the strength thereof, are proper rebuttal
and shall be admissible at trial.

6.

Dr. Dyckman’s opinions regarding profit margin differentiation
between not-for-profit and for-profit healthcare systems or financial
disincentives to patient choice resulting from network restrictions are
improper rebuttal and shall be inadmissible at trial.

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7.

Dr. Dyckman’s opinions regarding competition in the healthcare
market, generally and specific to behavioral health facilities, and as
between not-for-profit and for-profit healthcare systems, is proper
rebuttal and shall be admissible at trial.

8.

Stamm’s opinion testimony concerning damages shall be admissible
both during UHS Delaware’s case in chief and in its rebuttal case but
shall be limited to the facts, data, and reasoning contained in the four
corners of her initial report.

/S/ CHRISTOPHER C. CONNER
Christopher C. Conner, Chief Judge
United States District Court
Middle District of Pennsylvania

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