By Memorandum Opinion entered by The Honorable Richard G. Andrews in, Inc. et al. v. Securenet Technologies LLC, Civil Action No. 15-807-RGA (D.Del. January 8, 2019), the Court granted-in-part Defendant’s Motion to Exclude the Opinions of Brett Reed.

With respect to Mr. Reed’s lost profits opinion, Defendant argued that the Court should exclude the entirety of Mr. Reed’s lost profits opinion because (1) there was a defect in his analysis of the manufacturing and marketing prong of Panduit; or (2) it contains an opinion as to Plaintiff’s entitlement to its lost profits prior to the date from which Plaintiff is legally entitled to claim lost profits. Id. at *3. Plaintiffs responded that Mr. Reed’s lost profits opinion should not be excluded because (1) the challenge to the Panduit analysis done by Mr. Reed goes to the weight of the evidence; and (2) Mr. Reed’s opinion merely addresses alternative lost profits scenarios without purporting to determine the date from which Plaintiff is legally entitled to claim lost profits. Id.

After considering the arguments, the Court agreed with Plaintiffs that any defect in Mr. Reed’s Panduit analysis goes to the weight and credibility of his opinion instead of its admissibility and, thus, those opinions were not excluded. Id. The Court agreed with Defendants that, to the extent Mr. Reed’s lost profits opinion provides opinions that are inconsistent with the starting date of March 8, 2017 for lost profits recovery, those opinions were excluded. Id. at *4.

The Court goes on in the opinion to exclude other opinions of Mr. Reed as to the failure of others, copying, and praise by others and refuses to exclude his opinion on commercial success. Id. at *4-10.

Copies of the Memorandum and Opinion are attached.

By Memorandum Order entered by The Honorable Richard G. Andrews in Bio-Rad Laboratories, Inc. et al. v. 10X Genomics, Inc., Civil Action No. 15-152-RGA (D.Del. November 2, 2018), the Court denied Defendant’s motion to exclude the Supplemental Expert Report and Opinion of Plaintiffs’ damages expert, James E. Malackowski, and preclude Plaintiffs from presenting lost profits at trial.

By way of background, the Court entered a prior Daubert order which excluded Mr. Malackowski’s lost profits opinion regarding a two-supplier market and his reasonable royalty opinion to the extent that he failed to account for apportionment. Id. at *1. The Court subsequently granted Plaintiffs’ request to supplement Mr. Malackowski’s report and Plaintiffs subsequently conceded that they would not present a claim for lost profits at trial. Id. Thus, the only issue before the Court on Defendant’s motion to exclude the Supplemental Expert Report is whether it filled the gap in Mr. Malackowski’s initial reasonable royalty opinion with respect to apportionment. Id.

Defendant’s main argument was that Mr. Malackowski’s apportionment methodology remained flawed because he relied on qualitative, rather than quantitative, analyses. Id. However, the Court noted that Defendant’s theory conflicts with the general understanding that “any reasonable royalty analyses necessarily involves an element of approximation and uncertainty.” Id. After considering the parties’ briefing and oral argument, the Court concluded that “Mr. Malackowski’s supplemental report fills the gaps in his initial report at least to the extent necessary to make his reasonable royalty opinion admissible.” Id. at *4. The Court also rejected the remaining arguments made by Plaintiffs to exclude the supplemental report and testimony with respect to the reasonable royalty and apportionment.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Fairchild Semiconductor Corp. et al. v. Power Integrations, Inc., C.A. No. 12-540-LPS (D.Del. October 25, 2018), the Court denied Power Integration’s Motion to Preclude Evidence Under Daubert. In short, the Court concluded that (1) the challenged expert, Dr. Hanfield, is sufficiently qualified to provide reliable and helpful testimony on the topics that he has been offered; (2) Dr. Hanfield is highly experienced in supply chain management is a preeminent figure in the field and has coauthored textbooks; (3) there is a reasonable factual basis to find that the relevant market is within Dr. Hanfield’s area of expertise and he need not have the very specific and particularized additional experience that defendant claims is required; (4)a reasonable jury could find that Dr. Hanfield’s opinion is supported by the evidence; and (5) defendant’s concerns go to the weight the  jury may choose to attribute to Dr. Hanfield’s opinions and not their admissibility. Id. at *1-2.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intel Corp. v. Future Link Systems, LLC, Civil Action No. 14-377-LPS (D.Del. June 1, 2017), the Court denied (1) the motion of Plaintiff Intel Corporation to exclude royalty opinions of Defendant Future Link Systems, LLC’s damages experts, and (2) the motion of Defendant Future Link Systems, LLC to preclude the expert testimony of the damages expert of Plaintiff Intel Corporation. Both Plaintiff’s and Defendant’s motions attacked the apportionment methodology of the opposing damages expert and, thus, claimed the opinions were unreliable. Id. at * 2-10. In both instances, the Court found the experts’ methodology sufficiently reliable and found that questions about fact comparability are best left for cross-examination during trial. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Insight Equity d/b/a Vision-Ease Lens Worldwide v. Transitions Optical, Inc., Civil Action No. 10-635-RGA (D.Del. May 9, 2017), the Court granted in part and denied in part Plaintiff’s motion to exclude the expert testimony of Defendant’s expert which defined the relevant market for purposes of the antitrust claims.

Defendant’s expert defined the relevant market in the case to include both photochromic and clear lenses and used two econometric tests – cross-price elasticity of demand and co-price movement – to support her market definition. Id. at * 9. Plaintiff’s motion did not challenge the methodological soundness of cross-price elasticity and co-price movement; rather, it challenged the appropriateness of those tests under the facts and circumstances of the case. Id. at *12. In other words, Plaintiff’s motion challenged the “fit” of the expert’s use of cross-price elasticity of demand and co-price movement given the facts and circumstances of this case. Id.

Ultimately, with the exception of not allowing Defendant’s expert to rely on the co-price movement that she attributed to common components of clear and photochromic lenses, the Court rejected Plaintiff’s challenge and permitted Defendant’s expert to testify on co-price movement and cross-price elasticity of demand in giving her expert opinion on the relevant market for purposes of the antitrust claims. Id. at *14-16.

A copy of the Memorandum Opinion is attached.

The general takeaway is that an expert’s testimony must comply with the three requirements set forth in Daubert v. Merrell Dow Pharma., Inc., 509 U.S. 579, 589 (1993): (1) qualification; (2) reliability, and (3) fit. The Court has a gatekeeping role in assessing whether the proffered testimony complies with the Daubert requirements. However, Courts tend to interpret the qualification, reliability and fit requirements of Daubert liberally when evaluating whether to exclude proffered expert testimony.

By Memorandum Opinion entered by The Honorable Sherry R. Fallon in Monec Holdings AG v. Motorola Mobility, Inc., et al., Civil Action No. 11-798-LPS-SRF (D.Del., September 5, 2014), the Court granted the motion of defendants HTC Corporation and HTC America, Inc. (collectively, “HTC”) to strike the opening summary judgment and Daubert filings of plaintiff Monec Holding AG (“Monec”).

In support of their motion, HTC asserted that Monec improperly exceeded the page limits for its summary judgment briefing by including factual material, citations and legal analysis in the attached exhibits. Id. at 2. In response, Monec alleged that the exhibit in dispute, a witness Declaration, contained only facts and citations, as opposed to legal argument. Id. at 3.

Upon review, the Court found that the infringement portion of Monec’s opening brief contained no legal analysis and HTC had to refer to the exhibit in dispute in order to respond to Monec’s submissions. Id. Thus, the Court concluded that HTC was prejudiced by Monec’s improper reliance on the exhibit in dispute to convey its legal arguments, because HTC had to respond to the 272 page exhibit within the court’s page limitations on briefs. Id. Accordingly, the Court granted HTC’s motion to strike without prejudice, giving Monec the opportunity to file amended opening briefs and supporting documents within fourteen (14) days of the Court’s Order.

The take away for litigants from this Case is that the Court’s page limitations are real and need to be taken seriously, substantive legal arguments on infringement and other issues have to be made in the brief, and litigants need to be mindful that they are not attempting to use exhibits to the brief in an improper manner to attempt to circumvent applicable page limitations.

A copy of the Memorandum Opinion is attached.


By Memorandum Order entered by The Honorable Richard G. Andrews in XpertUniverse, Inc. v. Cisco Systems, Inc., Civil Action No. 09-157-RGA (D.Del., March 7, 2013), the Court granted in part the Daubert motion of defendant Cisco Systems, Inc. to exclude the proposed testimony of plaintiff’s expert on direct infringement and secondary considerations. Specifically, the Court excluded plaintiff expert’s conclusions about whether and how particular customers actually used the accused products and five of six of his opinions about secondary considerations of non-obviousness finding such conclusions and opinions not reliable because they were not the product of the expert’s scientific or call center expertise or his direct knowledge. Id. at 3-7.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in AVM Technologies, LLC v. Intel Corporation, Civil Action No. 10-610-RGA (D.Del., February 21, 2013), the Court granted the Daubert motion of defendant Intel Corporation seeking to exclude the proposed testimony of the expert witness on damages for plaintiff AVM Technologies, LLC. The Court found that such proposed testimony, which was based on the premise that "a reasonable royalty can be established by one litigation settlement agreement involving a different patent", is not reliable. Id. at 1. The Court also excluded most of plaintiff’s proposed inventor testimony concerning damages concluding that it was untimely disclosed and unreliable expert testimony. Id. at 3.

A copy of the Memorandum Opinion is attached.

By Order dated October 30, 2009 (PDF), Magistrate Judge Leonard P. Stark issued his recommendations on Defendant Swisslog’s Motion to Dismiss Due to Lack of Entire Patent Ownership, the parties’ claim construction contentions with respect to the claims in dispute, several motions for summary judgment filed by the parties, and certain evidentiary motions.

Plaintiff, McKesson Automation, Inc. (“Plaintiff” or “McKesson”), and Defendant, Swisslog Holdings AG (“Defendant” or “Swisslog”), are in the business of manufacturing and selling automated pharmaceutical retrieval and distribution systems to hospitals.  In this patent infringement action, McKesson asserts that Swisslog’s PillPick System infringes two of McKesson’s patents, U.S. Patent No. 5,468,110 (“the ‘110 patent”) and U.S. Patent No. 5,593,267 (“the ‘267 patent”). The ‘110 and ‘267 patents disclose a system for filling prescriptions and restocking medicines in a pharmacy. 

Judge Stark Recommends that Swisslog’s Motion to Dismiss Be Denied