United States District Court, D. Delaware
MEMORANDUM OPINION AND ORDER
WILLIAM C. BRYSON UNITED STATES CIRCUIT JUDGE.
the Court are three motions to preclude expert testimony at
trial, one filed by plaintiff Sonos, Inc., and two filed by
defendants D&M Holdings Inc. d/b/a The D Group, D&M
Holdings U.S. Inc., and Denon Electronics (USA), LLC
(collectively, "D&M"). Sonos seeks to exclude
the testimony of D&M's invalidity expert, Dr. Jay P.
Kesan. Dkt. No. 292. D&M seeks to strike all or parts of
the expert opinions of (1) Sonos's damages expert, Mr.
Michael E. Tate; (2) Sonos's infringement expert, Dr.
Kevin C. Almeroth; and (3) Sonos's invalidity expert, Dr.
Andrew Wolfe. Dkt. Nos. 299 and 300. On October 30, 2017, the
Court held a hearing on the motions, at which the Court ruled
on some of the issues and took some under submission. This
order addresses all of the issues raised by the parties in
the three motions. Sonos's motion is GRANTED in part and
DENIED in part. D&M's motions are GRANTED in part and
DENIED in part.
a seller of wireless audio equipment, has asserted several
patents against D&M, one of its competitors. The asserted
patents cover five features that are offered in both
Sonos's and D&M's networked wireless speaker
products. Two of the patents, U.S. Patent Nos. 9, 195, 258
("the '258 patent") and 9, 202, 509 ("the
'509 patent"), which are referred to as the
synchronization patents, allow for synchronized audio
playback by two or more speakers. Two other patents, U.S.
Patent Nos. 7, 571, 014 ("the '014 patent") and
8, 588, 949 ("the '949 patent"), referred to as
the group volume control patents, allow for the volume of two
or more speakers or speaker groups to be adjusted
simultaneously. Two other patents, U.S. Patent Nos. 9, 219,
959 ("the '959 patent") and 9, 212, 959
("the '959 patent"), referred to as the pairing
patents, allow for two or more separate speakers to be paired
to provide multi-channel sound. Another patent, U.S. Patent
No. 9, 042, 556 ("the '556 patent"), referred
to as the orientation patent, provides for shaping the audio
output based on the orientation of the speaker, e.g., whether
the speaker is horizontal or vertical. Finally, U.S. Patent
No. 8, 938, 312 ("the '312 patent"), referred
to as the autoplay patent, allows a speaker to detect an
audio signal from an external source, such as the
speaker's line-in input connector, and to select that
source for playback when the external audio source begins
outputting an audio signal. The two group volume control
patents and one of the synchronization patents (the '258
patent) are scheduled to be tried in a bellwether trial
beginning December 11, 2017.
Rule of Evidence 702 allows a witness "who is qualified
as an expert by knowledge, skill, experience, training, or
education" to provide opinion testimony. The Rule
specifies, however, that before allowing a witness to testify
as an expert, the court must determine that "(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.
Rule 702, the Supreme Court has explained that when an
expert's testimony is challenged, the district court has
a "basic gatekeeping obligation" to ensure that the
expert's testimony '"is not only relevant, but
reliable.'" Kumho Tire Co. v. Carmichael,
526 U.S. 137, 147 (1999) (quoting Daubert v. Merrell Dow
Pharms., Inc., 509 U.S. 579, 589 (1993)). When a jury is
the finder of fact, the court's role is not to displace
the jury, but to ensure that the expert's proffered
testimony is sufficiently reliable and relevant to issues
before the jury. See Fed.R.Evid. 702 Advisory
Committee Notes (2000) ("[T]he trial court's role as
gatekeeper is not intended to serve as a replacement for the
adversary system." (quoting United States v. 14.38
Acres of Land Situated in Leflore Cty., Miss., 80 F.3d
1074, 1078 (5th Cir. 1996))); United States v.
Williams. 235 Fed.Appx. 925, 927 (3d Cir. 2007)
("The overriding consideration ... is that expert
testimony should be admitted if it will assist the trier of
fact."). "Vigorous cross-examination, presentation
of contrary evidence, and careful instruction on the burden
of proof are the traditional and appropriate means of
attacking shaky but admissible evidence."
Daubert, 509 U.S. at 596; see also i4i Ltd.
P'ship v. Microsoft Corp., 598 F.3d 831, 852 (Fed.
Cir. 2010) ("When the methodology is sound, and the
evidence relied upon sufficiently related to the case at
hand, disputes about the degree of relevance or accuracy
(above this minimum threshold) may go to the testimony's
weight, but not its admissibility.").
Sonos's Motion to Exclude Dr. Kesan's Expert
Testimony on Invalidity
moves to exclude the expert testimony of Dr. Kesan on two
grounds: first, because Dr. Kesan had no technical work
experience in the pertinent art during the relevant time
period; and second, because Dr. Kesan's report contains
improper legal conclusions. For the reasons stated below,
Sonos's motion is granted in part and denied in part.
Dr. Kesan's Qualifications
witness may testify as a technical expert on issues such as
noninfringement and invalidity only if "the witness is
qualified as an expert in the pertinent art."
Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
1356, 1363 (Fed. Cir. 2008) (finding it an abuse of
discretion to allow expert testimony on invalidity and
noninfringement from a patent attorney who lacked a technical
background in the relevant art). Such an expert must possess
at least ordinary skill in the pertinent art, although there
is no requirement that "a witness possess something more
than ordinary skill in the art to testify as an expert."
Third Circuit has interpreted the "qualification"
requirement liberally, explaining: "Qualification
requires that the witness possess specialized expertise. We
have interpreted this requirement liberally, holding that a
broad range of knowledge, skills, and training qualify an
expert as such." Calhoun v. Yamaha Motor Corp.,
U.S.A., 350 F.3d 316, 321 (3d Cir. 2003); see also
Evonik Degussa GmbH v. Materia Inc., No. 09-cv-636, 2016
WL 337378, at *14 (D. Del. Jan. 26, 2016). An expert should
not be excluded "simply because the trial court does not
deem the proposed expert to be the best qualified or because
the proposed expert does not have the specialization that the
court considers most appropriate." Pineda v. Ford
Motor Co., 520 F.3d 237, 244 (3d Cir. 2008) (allowing an
engineer to testify about the inadequacy of a warning in a
service manual for an automotive rear liftgate, even though
the expert was not substantively qualified in the design of
automobile rear liftgates or the drafting of service manual
warnings); see also Holbrook v. Lykes Bros. S.S.
Co., 80 F.3d 777, 782 (3d Cir. 1996) (accepting more
general qualifications in holding that a treating physician
did not have to practice a particular specialty in order to
testify concerning certain matters). To the contrary, the
inquiry is "flexible" and "[a]ny dispute
between the parties about the strength of the
evidence in this case should be resolved by the jury."
Thomas & Betts Corp. v. Richards Mfg. Co., 342
Fed.Appx. 754, 761 (3d Cir. 2009) (alteration in original)
(quoting Pineda, 520 F.3d at 248-49).
Kesan's report describes a person of ordinary skill in
the art as someone who "would be familiar with digital
and analog circuits, wireless communication, and the
client-server environment" and who "would have a
Bachelor's degree in Electrical Engineering with at least
two years of relevant work experience or equivalent."
Expert Report of Jay P. Kesan Regarding the Invalidity of
Asserted Claims of U.S. 9, 219, 959, 7, 571, 014, 8, 588,
949, 9, 042, 556, 9, 202, 509, 8, 938, 312, 9, 213, 357, 9,
195, 258, and 8, 938, 637 ("Kesan Report"),
Dkt. No. 307, Ex. A Â¶ 106. The report of Sonos's expert,
Dr. Almeroth, describes a person of ordinary skill in the art
as "a person having the equivalent of a four-year degree
from an accredited institution (usually denoted as a B.S.
degree) in computer science, computer engineering, electrical
engineering, or the equivalent, and approximately 2-4 years
of professional experience in the fields of networking and
consumer audio systems, or an equivalent level of skill and
knowledge." Opening Expert Report of Dr. Kevin C.
Almeroth ("Almeroth Report"), Dkt. No. 311,
Ex. E-3 Â¶ 35. Dr. Almeroth explained in his deposition that
the level of skill needed for a person to be considered one
of ordinary skill in the art pertinent to this case is not
demanding, that "in some instances a master's degree
can substitute for some or all of the professional
experience, " and that "by the time you get to the
level of a Ph.D., you have a - a person who's beyond
ordinary skill in the art." Dkt. No. 347-1, Ex. 44, at
argues that Dr. Kesan is not a person of ordinary skill in
the art, because of his lack of technical work experience in
the pertinent art at the time of the invention. Sonos
contends that Dr. Kesan is simply an attorney and a law
professor who has done no relevant technical work for more
than 25 years. Most importantly, according to Sonos, Dr.
Kesan has never worked in the field of "consumer
networked audio technology, " and in particular he did
not work in that field in the early 2000s, when consumer
networked audio products were first emerging.
Court is satisfied that Dr. Kesan's qualifications are
sufficient to make his testimony helpful to the jury in
understanding the evidence in this case. Dr. Kesan holds a
B.S. degree in electrical engineering and both a M.S. and a
Ph.D. in electrical and computer engineering. During his
professional career, he has conducted research on the use of
radio frequency technologies for use in wireless
communications. Kesan Report App. B; Declaration
of Dr. Jay P. Kesan ("Kesan Deck"), Dkt. No.
345 ¶6. After completing his education, Dr. Kesan was
employed for four years at the IBM T.J. Watson Research
Center as a research staff scientist, where he worked on
integrated chip technology. Kesan Report App. B;
Kesan Deck Â¶ 7. Dr. Kesan then went to law school.
Since his graduation from law school in 1999, Dr. Kesan has
focused on the intersection of law and technology. He is
currently affiliated with both the College of Law and the
Department of Electrical and Computer Engineering at the
University of Illinois. Kesan Report App. B.
in recent years Dr. Kesan has devoted much of his time to
activities related more to law than to engineering, he has
continued to work on radio frequency identification devices
and has been issued a number of patents in that field of
technology. Dkt. No. 371-1, Ex. I at 8:15-20, 260:6-12. He
has also worked as a consulting expert in wired, wireless,
and cellular communication technologies, Kesan Deck,
Â¶11, and he has served as a technical expert in patent
lawsuits regarding various communication technologies,
id. Â¶ 12. In short, although his career has not been
devoted exclusively to work as an electrical engineer and
computer scientist, and although he has not specialized in
the study of consumer networked audio technology, Dr. Kesan
has a combination of education and work experience that is,
at the least, equivalent to a person having a bachelor's
degree and approximately two to four years of professional
experience in the electrical engineering, computer science,
and communication fields.
discounts Dr. Kesan's experience by pointing out that he
lacks two to four years of experience in "consumer
networked audio technology." Dkt. No. 370, at 1. But
that argument draws the scope of the pertinent art too
narrowly. Both Dr. Kesan and Dr. Almeroth agree that the
pertinent art includes electrical engineering and circuitry,
computer science and engineering, and networking and wireless
communications. However, Dr. Almeroth contends that the
pertinent art is further limited to "networking and
consumer audio systems, or an equivalent level of skill and
knowledge." Almeroth Report Â¶ 35. And in its reply
brief, Sonos suggests that the pertinent field of art is even
narrower than that, being limited to consumer networked audio
technology and not including "general networking
concepts." Dkt. No. 370, at 1.
question for the Court in assessing an expert's field of
expertise is whether 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." Fed.R.Evid. 702(a). In order for an expert to
have such knowledge, it is not necessary that the expert have
expertise in the precise technology that is the subject of
the patent or patents in suit. See In re Paoli R.R. Yard
PCB Litis., 35 F.3d 717, 741 (3d Cir. 1994) ("Rule
702's liberal policy of admissibility extends to the
substantive as well as the formal qualification of experts.
We have eschewed imposing overly rigorous requirements of
expertise and have been satisfied with more generalized
qualifications."); Knight v. Otis Elevator Co.,
596 F.2d 84, 87-88 (3d Cir. 1979) (holding that an expert
could testify that unguarded elevator buttons constituted a
design defect despite expert's lack of specific
background in design and manufacture of elevators).
danger of defining the scope of the pertinent art too
narrowly is that it may exclude experts with relevant
technical backgrounds. Particularly in a field involving new
and emerging technology, there may be few experts with the
kind of highly specialized expertise that Sonos is demanding.
The Court is satisfied that Dr. Kesan's technical
expertise is sufficiently related to the subject matter of
the patents in suit to be helpful to the jury in
understanding the evidence and making appropriate findings
with respect to the facts of the case. Sonos's challenges
to the specificity of Dr. Kesan's expertise go more to
the weight of his testimony and are therefore better left for
the jury to assess. See Thomas & Berts, 342
Fed.Appx. at 761.
case law that Sonos cites is not to the contrary. In
Sundance, Inc. v. DeMonte Fabricating Ltd., the
Federal Circuit held that the district court abused its
discretion in allowing a patent attorney with extensive
experience in patent law and procedure to testify about
noninfringement and invalidity. 550 F.3d at 1361. The court
did so because the attorney had "no experience
whatsoever" in the pertinent art and was, therefore, not
qualified to testify as an expert. Id. at 1363.
Similarly, in Proveris Scientific Corp. v. Innovasystems,
Inc., 536 F.3d 1256 (Fed. Cir. 2008), the Federal
Circuit affirmed a district court's ruling that
prohibited a mechanical engineer who specialized in satellite
design from testifying about the development of drug delivery
devices and laboratory equipment. Id. at 1268. And
in Aloe Coal Co. v. Clark Equipment Co., 816 F.2d
110 (3d Cir. 1987), the Third Circuit held that the district
court abused its discretion in allowing a tractor sales
representative to testify as an expert regarding the cause of
a tractor fire. Id. at 114. Dr. Kesan, with nearly a
decade of education in electrical engineering and subsequent
work on circuitry and communication technology, is far
removed from those examples. His testimony therefore will not
be excluded based on a lack of sufficient qualifications.
Sonos's challenge to Dr. Kesan's qualifications to
testify as an expert in this case is therefore denied.
Improper Legal Conclusions
also seeks to exclude Dr. Kesan's testimony on the ground
that he "improperly opines on numerous legal
topics." Dkt. No. 336, at 9. Although courts typically
forbid parties from calling "legal experts" to
testify about the requirements of the law, technical experts
are not forbidden from offering opinions on technical matters
that lead them to particular conclusions that bear on
ultimate issues in the case. See, e.g.,
Sundance, 550 F.3d at 1364. Moreover, patent law
experts are frequently permitted to testify about matters
such as general practices and procedures employed by the PTO
in examining or reexamining patents. WL. Gore &
Assocs., Inc. v. C.R. Bard, Inc., Civil Action No.
11-515, 2015 WL 12815314, at *3 (D. Del. Nov. 20, 2015);
Brigham & Women's Hosp., Inc. v. Teva Pharm. USA,
Inc., Civil Action No. 08-464, 2010 WL 3907490, at *1
(D. Del. Sept. 21, 2010); see also Icon-IP Pty Ltd. v.
Specialized Bicycle Components, Inc., 87 F.Supp.3d 928,
946-47 (N.D. Cal. 2015); Wright Asphalt Prods. Co., LLC
v. Pelican Refining Co., LLC, Civil Action No.
H-09-1145, 2012 WL 1936416, at *7-10 (S.D. Tex. May 29,
2012); Szoka v. Woodle, No. 02-cv-5524, 2004 WL
5512964, at *3 (N.D. Cal. June 7, 2004); Bausch &
Lomb, Inc. v. Alcon Labs., Inc., 79 F.Supp.2d 252,
255-56 (W.D.N.Y. 2000). Sonos has not pointed to any
particular portions of Dr. Kesan's report that constitute
opinion evidence about the requirements of the law, and the
Court therefore sees no reason to address that claim.
contention that "Dr. Kesan's improper legal opinions
are scattered throughout various sections and appendices of
the Kesan Report, " Dkt. No. 336, at 9, is too general a
complaint for the Court to address in any meaningful way.
Does Sonos expect the Court to review all 1315 pages of Dr.
Kesan's Report and Rebuttal Report in search of the
"improper legal opinions" that are assertedly
"scattered throughout various sections and
appendices" of those reports? Without any more
specificity than that, the Court is unable to address
Sonos's objection and therefore deems that objection
Sonos makes the broad assertion that "the numerous,
varied legal topics addressed in the Kesan Report make clear
that Dr. Kesan, who is not a person of ordinary skill in the
art in this case, is simply making attorney arguments clothed
as expert testimony that go beyond the practices and
procedures at the Patent Office." Dkt. No. 336, at 9.
But the Court has already concluded that Dr. Kesan is
sufficiently skilled in the art to testify as a technical
expert. His testimony on technical factual issues leading to
a conclusion of invalidity will therefore not be excluded.
Moreover, as noted above, a person familiar with the
practices of the U.S. Patent and Trademark Office, Dr. Kesan
is competent to testify as to issues of patent practice, and
his opinions on those subjects are sufficiently reliable to
submit to the jury.
its general complaints about Dr. Kesan's purported legal
opinions, Sonos raises several specific objections to Dr.
Kesan's report in the "Legal Opinions" portion
of its motion. Dkt. No. 336, at 9-11. In particular, Sonos
objects to Dr. Kesan's analysis of secondary
considerations, such as commercial success and copying. Sonos
contends that Dr. Kesan has merely stated ultimate
conclusions without supporting facts. Dkt. No. 336, at 10. As
to certain aspects of Sonos's challenge to Dr.
Kesan's testimony, the Court agrees.
Dr. Kesan's report contains a single paragraph addressing
commercial success as a secondary consideration bearing on
the issue of obviousness. In that paragraph, the report
asserts that "it appears that the primary reason for
[Sonos's] commercial success is the availability of
[Universal Plug and Play (UPnP) compatible] ...