Texas Advanced Optoelectronic Solutions, Inc. v. Intersil Corporation
Filing
492
MEMORANDUM OPINION AND ORDER GRANTING IN PART 316 SEALED MOTION TO EXCLUDE filed by Intersil Corporation. Signed by Judge Richard A. Schell on 2/10/2015. (baf, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
TEXAS ADVANCED OPTOELECTRONIC
SOLUTIONS, INC.,
Plaintiff,
v.
INTERSIL CORPORATION,
Defendant.
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Case No. 4:08-CV-451
MEMORANDUM OPINION AND ORDER GRANTING IN PART INTERSIL
CORPORATION’S MOTION TO EXCLUDE KEITH UGONE
The following are pending before the court:
1.
Intersil Corporation’s motion to exclude Keith Ugone (docket entry #316);
2.
TAOS’ response to Intersil’s motion to exclude Keith Ugone (docket entry #349);
3.
Intersil Corporation’s reply in support of motion to exclude Keith Ugone (docket
entry #364); and
4.
TAOS’ sur-reply to Intersil’s motion to exclude Keith Ugone (docket entry #384).
Having considered the Defendant’s motion, the responsive briefing and the court’s prior orders, the
court finds that the motion should be granted in part.
Pursuant to FED . R. EVID . 702, the Defendant moves the court to strike the expert testimony
of Dr. Keith Ugone (“Ugone”) regarding damages. In Daubert v. Merrell Dow Pharmaceuticals,
Inc., 509 U.S. 579, 590-93 (1993), the Supreme Court instructed district courts to function as
gatekeepers and determine whether expert testimony should be presented to the jury. District courts
must ensure that a proffered expert witness is qualified to testify by virtue of his or her “knowledge,
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skill, experience, training, or education.” FED . R. EVID . 702. Moreover, in order to be admissible,
expert testimony must be “not only relevant, but reliable.” Daubert, 509 U.S. at 589. The Daubert
analysis “appl[ies] to all species of expert testimony . . . .” United States v. Tucker, 345 F.3d 320,
327 (5th Cir. 2003).
In deciding whether to admit or exclude expert testimony, district courts should consider
numerous factors. Daubert, 509 U.S. at 594. First, the court should consider the question of
whether a theory or technique can be tested and has been tested. Id. at 593. Second, the court should
examine whether the theory or technique at issue “has been subjected to peer review and
publication.” Id. Third, the court should normally consider “the known or potential rate of error”
of the challenged method. Id. at 594. Fourth, the court may ascertain the degree of acceptance of
a particular method or technique. Id. In evaluating Daubert challenges, district courts focus “on [the
experts’] principles and methodology, not on the conclusions that [the experts] generate.” Id.
The Daubert factors are not “a definitive checklist or test.” Id. at 593. As the Court has
emphasized, the Daubert framework is “a flexible one.” Id. at 594. Accordingly, the decision to
allow or exclude experts from testifying under Daubert is committed to the sound discretion of the
district court. St. Martin v. Mobil Exploration & Producing U.S., Inc., 224 F.3d 402, 405 (5th Cir.
2000) (citation omitted).
In its motion, the Defendant moves to strike Ugone’s testimony regarding damages for a
number of reasons. In its January 29, 2015 “Memorandum Opinion and Order Granting in Part
Defendant Intersil Corporation’s Motion for Summary Judgment and Granting in Part Plaintiff’s
Motion for Partial Summary Judgment” (docket entry #462), the court addressed the issue of prelawsuit damages. In its motion for summary judgment, as well as its motion to exclude Ugone, the
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Defendant argues that the Plaintiff’s failure to mark its product with the ’981 Patent as required by
35 U.S.C. § 287(a) precludes the Plaintiff from obtaining damages that predate the filing of this
lawsuit. The Plaintiff responds that it is entitled to pre-suit damages because it provided the
Defendant with actual notice of infringement, by way of email, no later than March of 2006. Having
determined that genuine issues of material fact exist regarding the Plaintiff’s compliance with the
marking statute, the court denied the Defendant’s motion for summary judgment on this issue.
Likewise, the court denies the Defendant’s request here to exclude Ugone’s opinions regarding
damages that predate the filing of this lawsuit.
Also in its motion for summary judgment, as well as its motion to exclude Ugone, the
Defendant argues that the Plaintiff may not seek damages for extraterritorial sales. Having
determined in its “Memorandum Opinion and Order Granting Defendant’s Motion for Summary
Judgment with Respect to Extraterritorial Sales Based upon the Recent Decision by the Federal
Circuit in Halo” that the Plaintiff failed to create a genuine issue of material fact with respect to
whether the Defendant sold or offered to sell the Plaintiff’s patented invention within the United
States, except for the 1.2% discussed in the declaration of Sandeep Aji, the court granted the
Defendant’s motion for summary judgment on this issue. Likewise, the court grants the Defendant’s
request here to exclude Ugone’s opinion regarding damages pertaining to the Plaintiff’s claim of
patent infringement except for 1.2% of Defendant’s sales of its accused devices.
The remainder of the issues addressed in the briefing are arguments over the weight to be
given Ugone’s conclusions. As an expert witness, Ugone may use evidence that is “reasonably relied
upon by experts in the particular field in forming opinions or inferences upon the subject,” even if
that evidence is not otherwise admissible. FED . R. EVID . 703. The court finds that the remainder of
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the parties’ arguments go either to the nature of the evidence relied upon by Ugone, which is covered
by Rule 703, or to Ugone’s resolution of the available evidence, which the court finds to be both
reasonable and sufficiently reliable to support its admission. Sorting through the competing
conclusions drawn from the available evidence is a task best left to the jury. Skidmore v. Precision
Printing & Packaging, Inc., 188 F.3d 606, 618 (5th Cir. 1999). Based on the foregoing, it is hereby
ORDERED that Intersil Corporation’s motion to exclude Keith Ugone (docket entry #316)
is GRANTED IN PART.
.
SIGNED this the 10th day of February, 2015.
_______________________________
RICHARD A. SCHELL
UNITED STATES DISTRICT JUDGE
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