Tinnus Enterprises, LLC et al v. Telebrands Corporation

Filing 384

MEMORANDUM OPINION and ORDER. The Court GRANTS-IN-PART 329 Plaintiffs' Motion to Strike. Paragraphs 34 through 50 and 56 through 66 of Dr. Kamrin's rebuttal expert report are hereby STRICKEN. Within 14 days of the issue of this Order, Dr. Kamrin may file an amended report consistent with the admonitions set forth herein. 331 Defendants' Motion to Strike is DENIED. The parties shall file a joint report to inform the Court whether the doctrine of equivalents will be asserted in this case by August 18, 2017. Signed by Magistrate Judge John D. Love on 8/11/2017. (rlf)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
TINNUS ENTERPRISES, LLC,
LTD.,

ZURU

Plaintiffs,
v.
TELEBRANDS
CORPORATION,
BULBHEAD.COM, LLC,

§
§
§
§
§
§
§
§
§
§

CIVIL ACTION NO. 6:16-CV-00033-RWS

Defendants.
MEMORANDUM OPINION AND ORDER
Before the Court are two related motions to strike the expert reports of Plaintiffs’ expert,
Dr. Kudrowitz (Doc. No. 331), and Defendants’ expert, Dr. Kamrin (Doc. No. 329). The motions
have been fully briefed. (Doc. Nos. 329, 331, 361, 362, 376, 378.)
BACKGROUND
On January 26, 2016, Plaintiffs filed the instant action against Telebrands, alleging
infringement of U.S. Patent No. 9,242,749 (“the ’749 Patent”). (Doc. No. 1.) On April 19, 2016,
Plaintiffs amended their complaint to add allegations of infringement of U.S. Patent No.
9,315,282 (“the ’282 Patent”). (Doc. No. 3.) This suit followed in conjunction with the related
action Cause No. 6:15-cv-551 (“Tinnus I”) where the Court had already issued an injunction on
Telebrands’s Balloon Bonanza products. Plaintiffs also filed for an injunction in the instant
action, and after additional lengthy injunction proceedings, an injunction issued against
Defendant Telebrands on October 31, 2016. (Doc. No. 159.)

1

During the injunction proceedings, the Court applied its prior constructions from the
Tinnus I case for the terms “common face” and “second end.” Specifically, the Court applied “a
shared outer surface of the housing through which a plurality of holes extend” for the
construction of “common face,” and the Court applied “an outer limit of the housing distinct
from the first end” for the construction of “second end.” (Doc. No. 99, at 12–13.) The Court
ultimately found Plaintiffs had shown a likelihood of success of infringement based on these
constructions. Id.; Doc. No. 142. Later, during the claim construction proceedings in this matter,
the Court was asked to construe the terms “common face” and “second end.” The Court
maintained its construction of “common face” as “a shared outer surface of the housing through
which a plurality of holes extend,” rejecting that the “common face” must be planar or must be
“geometrically bounded.” (Doc. No. 200, at 12.) The Court similarly maintained its construction
of the term “second end” to mean “an outer limit of the housing distinct from the first end.” Id. at
14. The Court clarified that it had previously used the word “surface” to resolve a dispute
between the experts during the injunction proceedings and reaffirmed that the “second end” need
not be a linear limit. Id. Both parties now move to strike the opposing technical expert’s opinions
in part for violating these constructions. (Doc. Nos. 329, 331.)
LEGAL STANDARD
Rule 702 provides that an expert witness may offer opinion testimony if: (a) the expert’s
scientific, technical, or other specialized knowledge will help the trier of fact to understand the
evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c)
the testimony is the product of reliable principles and methods; and (d) the expert has reliably
applied the principles and methods to the facts of the case. Fed.R.Evid. 702.

2

The Rules also “assign to the trial judge the task of ensuring that an expert’s testimony
both rests on a reliable foundation and is relevant to the task at hand.” Daubert v. Merrell Dow
Pharms. Inc., 509 U.S. 579, 594, 597 (1993). “The relevance prong [of Daubert] requires the
proponent [of the expert testimony] to demonstrate that the expert’s ‘reasoning or methodology
can be properly applied to the facts in issue.’” Johnson v. Arkema, Inc., 685 F.3d 452, 459 (5th
Cir. 2012) (quoting Curtis v. M & S Petroleum, Inc., 174 F.3d 661, 668 (5th Cir. 1999)). “The
reliability prong [of Daubert] mandates that expert opinion ‘be grounded in the methods and
procedures of science and . . . be more than unsupported speculation or subjective belief.’”
Johnson, 685 F.3d at 459 (quoting Curtis, 174 F.3d at 668).
In assessing the “reliability” of an expert’s opinion, the trial court may consider a list of
factors including: “whether a theory or technique . . . can be (and has been) tested,” “whether the
theory or technique has been subjected to peer review and publication,” “the known or potential
rate of error,” “the existence and maintenance of standards,” and “general acceptance” of a
theory in the “relevant scientific community.” Daubert, 509 U.S. at 593–94; see also Kumho
Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 150 (1999) (“Daubert makes clear that the factors it
mentions do not constitute a ‘definitive checklist or test.’”); U.S. v. Valencia, 600 F.3d 389, 424
(5th Cir. 2010). “The proponent need not prove to the judge that the expert’s testimony is
correct, but she must prove by a preponderance of the evidence that the testimony is reliable.”
Johnson, 685 F.3d at 459 (quoting Moore v. Ashland Chem., Inc., 151 F.3d 269, 276 (5th Cir.
1998) (en banc)). At base, “the question of whether the expert is credible or the opinion is
correct is generally a question for the fact finder, not the court.” Summit 6, LLC v. Samsung
Elecs. Co., Ltd., 802 F.3d 1283, 1296 (Fed. Cir. 2015).

3

DISCUSSION
Both parties are moving to strike the other party’s technical expert’s opinions on the basis
that certain of those opinions related to the terms “second end” and “common face” violate the
Court’s construction of those terms. (Doc. Nos. 329, 331.)
A. Plaintiffs’ Motion to Exclude Dr. Kamrin (Doc. No. 329)
Plaintiffs move to exclude Defendants’ technical expert, Dr. Kamrin’s, opinions on noninfringement as improper rearguments of claim construction issues this Court has already
resolved. (Doc. No. 329, at 2.) Plaintiffs contend that Dr. Kamrin provides two non-infringement
arguments with respect to the ’749 Patent: the Battle Balloons housing does not have (1) “a
plurality of holes extending through a common face of the housing at a second end” or (2) “a
plurality of hollow tubes, each hollow tube attached to the housing at a respective one of the
holes at the second end of the housing.” (Doc. No. 329, at 6, citing Kamrin Rebuttal (Doc. No.
329-2) at ¶¶ 8, 21.) Plaintiffs contend that these arguments are impermissible arguments to
reconstrue “common face” and “second end.” (Doc. No. 329, at 6.) Defendants argue that Dr.
Kamrin repeatedly makes clear that he is indeed applying this Court’s claim constructions—and
not the constructions Telebrands previously advocated. (Doc. No. 362, at 5, citing Doc. No. 3292 ¶¶ 13, 25, 32, 34, 50, 51, 52, 53, 54, 56; Doc. No. 328-8 at 216:7-12.) Defendants point out that
Plaintiffs lift their argument from one footnote that is taken out of context where Dr. Kamrin
provides that his construction, if it were adopted, would provide further support for his argument.
(Doc. No. 362, at 5.)
The Court has reviewed Dr. Kamrin’s rebuttal report, the report in question, and has very
serious concerns regarding several of the paragraphs contained therein. For example, beginning
in paragraph 36 of his rebuttal report, Dr. Kamrin provides a dictionary meaning for the term
“common face”—a term which this Court has already construed. (Doc. No. 329-2, at ¶ 36.) Dr.
4

Kamrin then goes on to conclude that “[i]n the context of geometric solids, the applicable
understanding of ‘face’ is a surface that is bounded by a geometric transition.” Id. Dr. Kamrin
similarly explains how he is varying the Court’s construction of “common face” based on his
understanding that all geometric transitions are not irrelevant in paragraphs 34 and 35. Id. at ¶¶
34, 35. Not only is this opinion testimony regarding the meaning of the term “common face,” it
appears to call into question the Court’s construction of the term which rejected a geometric
definition of “face.” In paragraphs 37 through 43, Dr. Kamrin continues on by offering meaning
to the term in light of the prosecution history. Id. at ¶¶ 37–43. Dr. Kamrin then further provides
his own examples to support his understanding of the term and ultimately concludes that “a
person of ordinary skill in the art would understand that geometric transitions are relevant to
determining the boundaries of a common face, otherwise the term ‘common face’ would be
rendered meaningless.” Id. at ¶¶ 44–50. These opinions are nothing more than continued claim
construction argument, concluding what must be understood in order to give the term “common
face” meaning to a person of ordinary skill in the art. These opinions, therefore, are not
appropriately raised in a rebuttal report to infringement and will not be permitted. To be clear,
the Court is not foreclosing Dr. Kamrin’s noninfringement arguments, but he will not be
permitted to provide his irrelevant opinions on the meaning of “common face.”
Next, in paragraphs 56 through 60, Dr. Kamrin discusses Dr. Kudrowitz’s prior
constructions and the Court’s rejection of those constructions for “second end.” Id. at ¶¶ 56–60.
While Dr. Kamrin is free to disagree with Dr. Kudrowitz’s opinions set forth in his opening
report on infringement, he is not free to discuss the Court’s rejection of his positions in
construing the terms. Explanations of the Court’s reasoning or rejection of one side’s position
during the claim construction process is exactly the type of prejudicial and confusing testimony

5

precluded by the Rules of Evidence. See Fed.R.Evid. 403. Defendants are free to cross-examine
Dr. Kudrowitz on any inconsistent statements, but Dr. Kamrin will not be permitted to offer his
opinions on Dr. Kudrowitz’s prior claim construction opinions, the Court’s reasoning, or his
interpretation thereof, for rejecting any asserted positions.
Paragraphs 61 through 64 are a continued discussion of the Court’s reasoning, but with
inserted opinions regarding the prosecution history. (Doc. No. 329-2, at ¶¶ 61–64.) For example,
Dr. Kamrin states that “if ‘outer limit’ means ‘outer surface,’ then in FIG. 5 of Boise, the ‘second
end’ includes the entire cylindrical surface. Id. at ¶ 62. These paragraphs appear to be a
disagreement with Dr. Kudrowitz’s current opinions on what meets the term “second end.”
However, Dr. Kamrin never addresses which of Dr. Kudrowitz’s opinions he is disagreeing with.
Rather, the paragraphs read as his opinions interpreting the meaning of “outer limit” in light of
the prosecution history, which the Court has already made clear in its claim construction opinion.
Paragraph 65 is a continued explanation of how Dr. Kamrin would interpret the term “outer
limit” in the Court’s construction of “second end” based upon the specification of the ’749
Patent. Id. at ¶ 65. This opinion is simply a construction of the Court’s construction. Finally,
Paragraph 66 is Dr. Kamrin’s interpretation of the Court’s meaning of the term “end” which was
included in the Court’s reasoning regarding its construction of “second end.” Id. at ¶ 66. Dr.
Kamrin effectively latches onto the Court’s use of the term “end” without further definition to
reinsert that the end is a linear limit—a position repeatedly rejected by the Court during claim
construction.
The Court finds these paragraphs to be interpretations of the terms “common face” and
“second end” with explanations based on the prosecution history, the specification, extrinsic
evidence, and the knowledge of a person of ordinary skill in the art. Dr. Kamrin will not be

6

permitted to testify as to the meaning of the terms “second end” or “common face,” nor will he
be permitted to provide his positions on how a person of ordinary skill in the art would interpret
the Court’s claim construction for those terms. Indeed, explaining how a person of ordinary skill
in the art would interpret the Court’s construction of claim terms is the equivalent of construing
the Court’s construction. The jury will be provided with the Court’s claim constructions and will
apply those constructions in determining infringement. This is not the time to argue to the jury
about the parties’ changing claim construction positions or the experts’ opinions on how to
interpret the Court’s constructions based on dicta. Dr. Kamrin’s opinions should be limited to
strictly why he finds that the Battle Balloon products do not infringe under the Court’s
constructions and why he disagrees with Dr. Kudrowitz.
Therefore, the Court GRANTS-IN-PART Plaintiffs’ Motion to Strike (Doc. No. 329) as
to Paragraphs 34 through 50 and 56 through 66 of Dr. Kamrin’s rebuttal report. Dr. Kamrin will
be granted leave to amend his report and may modify, for example, paragraph’s 61 through 64 to
address specifically how he is disagreeing with Dr. Kudrowitz. Any further modifications should
comply with the admonitions of this Order. This is not an opportunity to wholesale change or
alter opinions expressed. Moreover, should Dr. Kamrin submit a supplemental report that again
so blatantly violates the Court’s claim construction order or attempts to provide continued claim
construction opinion, the Court will not hesitate to award sanctions in the form of an adverse
inference and/or attorney’s fees.1
As to the opinions regarding the doctrine of equivalents, the parties are ORDERED to
file a joint report to inform the Court whether the doctrine of equivalents will be asserted in this
case by August 18, 2017.
1

Dr. Kamrin may consider his claim construction arguments preserved for appellate purposes without the need to
further articulate those opinions in his supplemental report.

7

B. Defendants’ Motion To Exclude Dr. Kudrowitz (Doc. No. 331)
Defendants move to exclude the opinions of Plaintiffs technical expert, Dr. Barry
Kudrowitz, related to the infringement and validity of the ’749 Patent. (Doc. No. 331, at 4.)
Specifically, Defendants argue that Dr. Kudrowitz has construed “second end” inconsistent with
the Court’s admonitions and clarifications and that he effectively made up his own constructions
of the term “common face.” (Doc. No. 331, at 5–8.) Plaintiffs argue that Dr. Kudrowitz does not
offer the opinions Defendants’ suggest in any of his reports, but rather made those statements
during cross-examination in which he was asked to apply the claim terms “second end” and
“common face” to prior art references. (Doc. No. 361, at 7.)
The Court similarly reviewed Dr. Kudrowitz’s opening expert report, the first report in
question, to address Defendants’ complaints. (Doc. No. 331-2.) After a thorough review of Dr.
Kudrowitz’s report, the Court did not find any instances in his report where he construed the
terms “common face” or “second end” inconsistent with the Court’s construction. Indeed,
Defendants do not cite any portions of his report in reliance in their motion. Instead, Defendants
appear to rely on Dr. Kudrowitz’s testimony during a deposition where Defendants ran him
through a hypothetical applying his constructions to the prior art. (Doc. No. 331, at 5–8.) If Dr.
Kudrowitz’s opinions read too broadly on the prior art, that is a matter for cross-examination, not
for exclusion where Dr. Kudrowitz has not actually offered any opinions in his report regarding
the testimony Defendants’ cite as problematic.
Defendants next argue that Dr. Kudrowitz’s opinions regarding secondary considerations
should be excluded because they are effectively conclusory regurgitations of evidence and are
unhelpful to the trier of fact. (Doc. No. 331, at 9–13.) Plaintiffs respond that Dr. Kudrowitz’s
opinions on secondary considerations rely on evidence and were properly disclosed under the
rules. (Doc. No. 361, at 8–9.)
8

The Court similarly reviewed Dr. Kudrowitz’s rebuttal report. (Doc. No. 331-3.) As to
secondary considerations, Defendants motion critiques Dr. Kudrowitz’s opinions as being overly
simple, containing a “high level regurgitation” of information, and lacking in explanation for his
conclusions. (Doc. No. 331, at 9–12.) These type of arguments do not give the Court a basis to
strike Dr. Kudrowitz’s opinions based upon a lack of reliability as they go to the weight of his
opinions and not the admissibility. Summit 6, 802 F.3d at 1296 (“the question of whether the
expert is credible or the opinion is correct is generally a question for the fact finder, not the
court.”). Defendants are again free to cross-examine Dr. Kudrowitz on the sufficiency of his
opinions related to secondary considerations.
For these reasons, the Court DENIES Defendants’ Motion to Strike (Doc. No. 331).
CONCLUSION
For the reasons stated herein, the Court GRANTS-IN-PART Plaintiffs’ Motion to Strike
(Doc. No. 329). Paragraphs 34 through 50 and 56 through 66 of Dr. Kamrin’s rebuttal expert
report are hereby STRICKEN. Within 14 days of the issue of this Order, Dr. Kamrin may file
an amended report consistent with the admonitions set forth herein. Defendants’ Motion to Strike
(Doc. No. 331) is DENIED. The parties shall file a joint report to inform the Court whether the
doctrine of equivalents will be asserted in this case by August 18, 2017.

9

So ORDERED and SIGNED this 11th day of August, 2017.

10