United States District Court, D. Delaware
W. Poff, Esq., Pilar G. Kraman, Esq., Young Conaway Stargatt
& Taylor, Counsel for Plaintiffs Of Counsel: Douglas A.
Cawley, Esq., Christopher T. Bovenkamp, Esq., Eric S. Hansen,
Esq., Avery R. Williams, Esq., Justin W. Allen, Esq., McKool
Smith, PC, Angela M. Vorpahl, Esq., McKool Smith, John B.
Campbell, Esq., Leah Bhimani Buratti, Esq., Kevin P. Hess,
Esq., McKool Smith, PC.
B. Blumenfeld, Esq., Rodger D. Smith, II., Esq., Jeremy A.
Tigan, Esq., Morris, Nichols, Arsht &Tunnell, LLP,
Counsel for Defendants Of Counsel: John M. Desmarais, Esq.,
Jon T. Hohenthaner, Esq., Andrew G. Heinz, Esq., JeffreyS.
Seddon, II, Esq., William D. Findlay, Esq., Desmarais LLP.
February 22, 2017, 1 entered a summary judgment order
excluding Parallel Networks' theory of indirect
infringement. (Docket Item ("D.I.") 367.) At the
same time, I denied as moot a motion filed by IBM pursuant to
Daubert v. Merrell Dow Pharmaceuticals, Inc., 509
U.S. 579 (1993), that sought to exclude the testimony of Mr.
John R. Bone (Parallel Networks' damages expert) relating
to Parallel Networks' theory of indirect infringement.
Shortly after I entered that order, IBM filed a motion in
limine seeking to exclude all testimony from Mr. Bone. (D.I.
382 Ex. 6 at 14.) That motion is the subject of this
the entry of partial summary judgment, IBM learned that
Parallel Networks intended to use Mr. Bone's report to
support a damages theory relating to the alleged direct
infringement by IBM of the asserted patent claims via
IBM's use of its website, IBM.com. (D.I. 390
(Tr.) at 30-31 ("[S]o we call Parallel
Networks after the summary judgment ruling and we say we
assume ... that you won't be calling Bone because he has
no opinion on damages for IBM.com, [but] they say
no, we're going to call him, he did discuss
IBM.com.").) The parties now dispute whether
Mr. Bone offered an opinion on damages related to such
infringement, and, if Mr. Bone did offer that opinion,
whether the opinion satisfies the requirements of
Daubert and Federal Rule of Evidence 702.
pre-trial conference, I expressed my preliminary views that
Mr. Bone had not offered an opinion on damages related to
that theory of direct infringement (id. at 41) and
that IBM had "ma[de] a pretty strong Daubert
case" (id. at 42), However, because the first
round of motion-in-limine briefing was limited to only a few
pages, I elected to give Parallel Networks a chance to more
fully brief the significant issues in play. (Id. at
41 ("I want to give you a chance to more fully brief
now reviewed the briefing and given the matter further
consideration, I conclude that Mr. Bone did not offer an
opinion on damages relating to IBM's use of its website
and that any opinion he now purports to offer does not
satisfy the requirements of Daubert and Rule 702.
Rule of Civil Procedure 26(a)(2)(B)(i) requires that expert
reports contain "a complete statement of all opinions
the witness will express and the basis and reasons for
them[.]" "If a party fails to provide information
... as required by Rule 26(a)... the party is not allowed to
use that information ... at a trial, unless the failure was
substantially justified or is harmless." Fed.R.Civ.P.
37(c)(1); Coal, to Save Our Children v. Bd. of Educ. of
Del, 90 F.3d 752, 775-76 (3d Cir. 1996) (concluding that
the district court did not abuse its discretion when it
excluded undisclosed, "surprise" expert testimony).
Together, Rules 26 and 37 provide trial courts with
discretion to exclude opinions that are not disclosed in
expert reports. Johnson v. Vanguard Mfg., Inc., 34
Fed.App'x 858, 859 (3d Cir. 2002) ("A party that
fails to disclose evidence required by Rule 26(a) will not be
allowed to use that evidence unless the failure to disclose
the evidence is harmless."); Inline Connection Corp.
v. AOL Time Warner Inc., 477 F.Supp.2d 604, 614-15 (D.
Del. 2007) (granting motion to exclude an opinion that was
not disclosed in an expert report); see also ZFMeritor,
LLC v. Eaton Corp., 696 F.3d 254, 297 (3d Cir. 2012)
("A plaintiff omits evidence necessary to sustain a
damages award at its own risk."). Adequate disclosure is
important because it enables other parties to prepare for
cross-examination, to seek other expert opinions, and to
prepare their litigation positions. E.g., Metavante Corp.
v. Emigrant Sav. Bank, 619 F, 3d 748, 762 (7th Cir.
admissibility of expert testimony is governed by Federal Rule
of Evidence 702. Under that rule, expert testimony is
admissible only if it "will help the trier of fact to
understand the evidence[, ] ... is based on sufficient facts
or data[, ] .., is the product of reliable principles and
methods[, ] and ... reliably applie[sj the principles and
methods to the facts of the case." Fed.R.Evid. 702. The
role of the district court is to serve as a
"gatekeeper" - to protect the jury from evidence
that is unreliable, confusing, or unduly prejudicial.
Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137,
145, 147-48 (1999); Daubert v. Merrell Dow Pharms.,
Inc., 509 U.S. 579, 589-92 (1993). There must, in that
regard, be both reliable methodology in the analysis and an
adequate "fit" between the offered expert opinion
and the facts at issue in the case. Daubert, 509
U.S. At 591 (quoting United States v. Downing, 753
F.2d 1224, 1242 (3d Cir. 1985)). Expert conclusions that do
not have an adequate analytical connection to the facts are
excludable. See Gen. Elec. Co. v. Joiner, 522 U.S.
136, 146 (1997) ("A court may conclude that there is
simply too great an analytical gap between the data and the
to Federal Rule of Evidence 104, the burden of proof with
respect to fit and reliability under Rule 702 lies on the
party attempting to offer the expert evidence. See
Fed. R. Evid. 702 advisory committee's note to 2000
amendment ("[T]he admissibility of all expert testimony
is governed by the principles of Rule 104(a). Under that
rule, the proponent has the burden of establishing that the
pertinent admissibility requirements are met by a
preponderance of the evidence.").