United States District Court, D. Delaware
LEONARD P. STARK DISTRICT JUDGE
6, 2016, Plaintiff Kraft Foods Group Brands LLC
("Kraft" or "Plaintiff) filed two
Daubert Motions to Exclude the testimony of experts
retained by Defendants TC Heartland, LLC and Heartland
Packaging Corporation ("Heartland" or
"Defendants"). (See D.I. 316, 320) The
Court heard argument on these and other motions on August 30,
2016. (See D.I. 416 ("Tr."))
Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579,
597 (1993), the Supreme Court explained that Federal Rule of
Evidence 702 creates "a gatekeeping role for the [trial]
judge" in order to "ensur[e] that an expert's
testimony both rests on a reliable foundation and is relevant
to the task at hand." Rule 702(a) requires that expert
testimony "help the trier of fact to understand the
evidence or to determine a fact in issue." Expert
testimony is admissible only if "the testimony is based
on sufficient facts or data, " "the testimony is
the product of reliable principles and methods, " and
"the expert has reliably applied the principles and
methods to the facts of the case." Fed.R.Civ.P.
702(b)-(d). There are three distinct requirements for proper
expert testimony: (1) the expert must be qualified; (2) the
opinion must be reliable; and (3) the expert's opinion
must relate to the facts. See Elcock v. Kmart Corp.,
233 F.3d 734, 741 (3d Cir. 2000).
Motion to Exclude Robert Kimmel's Testimony
seeks to exclude Dr. Robert Kimmel's non-infringement
opinions concerning the asserted claims' packaging
limitations. Kraft argues that Dr. Kimmel's testimony
regarding the packaging limitations should be excluded
because it is unreliable. (See D.I. 316 at 3) More
specifically, Kraft contends that Dr. Kimmel's testimony
is built on the view that Kraft's claims are limited
flavored beverage concentrates that are packaged in
containers that are "approximate copies" of those
depicted in the '472 and '557 patent specifications.
According to Kraft, this testimony violates the claim
construction order, in which the Court rejected
Heartland's position that the packaging claims of the
'472 and '557 patents should be construed as
encompassing only "approximate copies" of the
embodiments disclosed in the specification. (See
D.I. 198 at 23-26) Further, Kraft argues, this
"approximate copies" approach is not the correct
legal test for assessing infringement.
deposition, Dr. Kimmel stated that Heartland's counsel
instructed him to conduct his infringement analysis by not
only comparing the accused products to each of the claim
elements, but "in addition in this case because of the
crowded nature of this field" to consider "an
additional restriction to the specific embodiments that are
... clearly delineated in the patents, " i.e., the
figures. (D.I. 316 at 5-6) Heartland does not dispute that it
so instructed Dr. Kimmel. (See D.I. 363 at 2-5)
argument, counsel for Heartland stated that "even if. .
. literal infringement is shown ..., it is a defense that the
accused containers are not equivalent." (Tr. at 16) In
support of this "reverse doctrine of equivalents, "
Heartland refers the Court to SRI International v.
Matsushita Electric Corporation of America, 775 F.2d
1107 (Fed. Cir. 1985), and. Holland Furniture Co. v.
Perkins Glue Co., 277 U.S. 245, 250 (1928). (Tr. at
16-17) Kraft responds that the reverse doctrine of
equivalents has never been asserted as an infringement
defense in this case and, further, that Heartland is
attempting to use the term to "cloak an existing
argument in some different disguise." (Tr. at 20)
occurs when a properly construed claim of an issued patent
covers an accused device." DSW, Inc. v. Shoe
Pavilion, Inc., 537 F.3d 1-342, 1346 (Fed. Cir. 2008).
Thus, "infringement is to be determined by comparing the
asserted claim to the accused device, not by comparing the
accused device to the figures of the asserted patent."
Catalina Lighting, Inc. v. Lamps Plus, Inc., 295
F.3d 1277, 1286 (Fed. Cir. 2002). The reverse doctrine of
equivalents is "an equitable doctrine designed to
prevent unwarranted extension of the claims beyond a fair
scope of the patentee's invention." Roche Palo
Alto LLC v. Apotex, Inc., 531 F.3d 1372, 1377 (Fed. Cir.
2008) (internal quotation marks omitted). Its application is
limited to circumstances "where a device is so far
changed in principle from a patented article that it
performs the same or similar function in a substantially
different way, but nevertheless falls within the literal
words of the claim." Id. (emphasis original)
(quoting Graver Tank & Mfg. Co. v. Linde Air Prods.
Co., 339 U.S. 605, 608-609 (1950)).
claim construction order, the Court rejected Heartland's
legal argument that the claims asserted in this case are
limited to the embodiments specifically disclosed in the
specification. (D.I. 198 at 23-26) Heartland has not
presented to the Court any new claim construction arguments
that justify reevaluation of that position. Even assuming
that assertion of the reverse doctrine of equivalents defense
would be appropriate and timely, the law does not permit
Heartland to import limitations from the specification into
the claims through expert testimony.
expert testimony that is inconsistent with the Court's
claim construction is unreliable and unhelpful to the finder
of fact, Dr. Kimmel's infringement opinions regarding the
packaging limitations of the asserted patents are STRICKEN,
and Kraft's motion (D.I. 316) is GRANTED.
Motion to Exclude Bradford ...