ABS Global, Inc. v. Inguran, LLC

Filing 579

ORDER denying as moot #441 Motion in Limine ; granting in part and denying in part #472 Motion in Limine Signed by District Judge William M. Conley on 07/25/2016. (mfh)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

ABS GLOBAL, INC.,
Plaintiff/Counterclaim Defendant,

OPINION AND ORDER

v.

14-cv-503-wmc

INGURAN, LLC,
Defendant/Counterclaimant/Third-Party Plaintiff,
and
XY, LLC,

Intervening Defendant/Counterclaimant/Third-Party Plaintiff,

and
CYTONOME/ST., LLC,
Intervening Defendant,
v.
GENUS PLC,
Third-Party Defendant.

While the court has ruled on the majority of the parties’ motions in limine, there
are a number of Daubert motions pending. The court issues this opinion and order on
the two challenges that appear to concern an expert’s proffer on liability issues (dkt.
##441, 472), while reserving on the numerous other challenges that appear to concern
solely the admissibility of experts’ proffers on damage issues.

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A.

Plaintiff’s Motion to Exclude Certain Testimony of Dr. John Nolan (dkt.
#441).
ABS seeks to exclude testimony of ST’s expert John Nolan’s that ABS knew or

should have known that Kathy Mean misappropriated trade secrets.

However, ABS

states in its motion in limine (dkt. #480) that it is conceding liability for
misappropriation of trade secrets based on Kathy Mean’s use of XY’s ejaculate addition
protocols to prepare similar protocols in 2011 for ABS. Since this motion appears moot,
it is DENIED.
B.

Defendants’ Motion to Exclude Testimony of Dr. John Parks (dkt. #472).
ST seeks to exclude testimony from ABS’s technical expert, John Parks, on any

contract issues. Dr. Parks is a proffered technical expert on scientific matters related to
sperm, and he has provided expert reports focused on the protocols and media for sperm
sorting.

ST points out, however, that his expert report also purports to opine on

“contract-related issues” -- namely, whether information constitutes “Confidential
Information” as defined by Section 16 of the Agreement, as well as whether certain
conduct is a breach of the Agreement. On these issues, ST argues that Parks is not
qualified to opine, and further that contract interpretation is never a proper subject for
expert testimony.
ABS responds that the motion should be denied because Dr. Parks never reaches
any legal conclusions in his expert reports. Instead, Dr. Parks reviewed the categories of
information that allegedly constituted confidential information, concluded that the
information was either known in the field generally or ST employees had already revealed
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it in published scientific papers specifically. By ABS’s lights, Dr. Parks’ assessment as to
whether information is “confidential, non-public, proprietary and/or generally not known
to the public” actually calls for scientific and technical opinions. In support, ABS cites
multiple decisions that have permitted an expert to testify about issues related to
contract terms or interpretation, each time because their area of expertise was relevant to
understanding the terms of the contract. See Tendeka, Inc. v. Glover, No. 13-cv-1764,
2015 WL 2212601, at *24 (S.D. Tex. May 11, 2015) (with respect to misuse of
confidential information, the court permitted a chemical engineer to testify about
whether defendant independently developed a compound or used confidential
information); Pixart Imaging, Inc. v. Avago Tech. Gen. IP (Singapore) Pte. Ltd., No. 10-cv00544, 2011 WL 5417090, at *6 (N.D. Cal. Oct. 27, 2011) (permitting expert
testimony regarding whether certain products were covered by a licensing agreement).
ABS also emphasizes that Dr. Parks’ specific opinions about the Agreement were
not legal opinions. Instead, ABS asserts that Parks was simply applying the definition of
“Confidential Information” under the Agreement in testifying: (1) that “quality control
data” was not included in the definition; (2) that actions allegedly violating Section 16
took place before the effective date of the Agreement; (3) about Dr. Nolan’s comments;
and (4) about the hypothetical amount of harm ST would suffer as result of a breach of
Section 16.
Dr. Parks’ opinions about what information was in the public sphere and,
therefore, not covered by the definition of “Confidential Information” in Section 16 of

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the Agreement both appear to be tied to his expertise in the field of sperm sorting.
Accordingly, the court will permit him to testify on those issues. However, ABS may not
seek any testimony from Dr. Parks about whether the timing of certain behavior violated
Section 16, and certainly not whether he believes that ABS’s conduct ultimately
constituted a breach of Section 16. The motion is, therefore, GRANTED in part and
DENIED in part.
ORDER
IT IS ORDERED THAT:
1. Plaintiff ABS Global, Inc.’s motion in limine to exclude certain testimony of
Dr. John Nolan (dkt. #441) is DENIED as moot.
2. Defendants Inguran, LLC and XY, LLC’s motion in limine No. 2 to exclude
testimony of Dr. John Parks (dkt. #472) is GRANTED IN PART AND
DENIED IN PART.
Dated this 25th day of July, 2016.
BY THE COURT:

/s/
_______________________________
William M. Conley
District Judge

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