United States District Court, D. Delaware
G. Connolly III, Ryan P. Newell, and Kyle Evans Gay, CONNOLLY
GALLAGHER LLP, Wilmington, DE; Jeffrey S. Standley, James Lee
Kwak (argued), and F. Michael Speed, Jr. (argued), STANDLEY
LAW GROUP LLP, Dublin, OH, attorneys for Plaintiff.
Shaw (argued), Karen E. Keller, David M. Fry, and Nathan R.
Hoeschen, SHAW KELLER LLP, Wilmington, DE; Douglas J. Kline
(argued), Srikanth K. Reddy (argued), and Molly R. Grammel,
GOODWIN PROCTER LLP, Boston, MA; Naomi L. Birbach, GOODWIN
PROCTER LLP, New York, NY; Yuval H. Marcus, Cameron S.
Reuber, Matthew L. Kaufman, and Lori L. Cooper, LEASON ELLIS
LLP, White Plains, NY, attorneys for Defendants.
ANDREWS, U.S. DISTRICT JUDGE.
pending before the Court are Plaintiffs Daubert
Motion (D.I. 207) and Defendants' Daubert
Motion. (D.I. 202). The parties have fully briefed the
issues. (D.I. 203, 212, 239, 240, 247, 252). I heard helpful
oral argument on August 22, 2019. (Hr'g Tr.).
Manufacturing Resources International, Inc. filed suit
against Defendants Civiq Holdings, Civiq Smartscapes, Comark
Holdings, and Comark on March 14, 2017 alleging infringement
of seventeen patents. (D.I. 1 ¶ 144). Defendants
counterclaimed. (D.I. 18). Both parties have amended their
claims. (D.I. 84, 101). The parties completed fact discovery
on November 30, 2018 and expert discovery on April 5, 2019.
(D.I. 163). Trial is scheduled to begin on September 9, 2019.
disputed patent claims remaining in the case are claim 1 of
U.S. Patent No. 8, 854, 595 ("the '595
Patent"), claims 8, 11, and 14-15 of U.S Patent No. 8,
854, 572 ("the '572 Patent"), claims 2 and 6 of
U.S. Patent No. 8, 773, 633 ("the '633
patent"), claim 18 of U.S. Patent No. 9, 629, 287
("the '287 patent"). (D.I. 212 at 3; D.I. 264).
I have granted summary judgment of infringement as to claims
1 and 2 of the U.S. Patent No. 9, 173, 325 ("the
'325 patent"). (D.I. 282 at 9; D.I. 283).
moves to exclude the opinions of Mr. Eichmann,
Defendants' damages expert, relating to forward citation
analysis and reasonable royalty calculations. (D.I. 212 at
3). Defendants move to exclude (1) all damages opinions from
Plaintiffs damages expert, Ms. Bennis; (2) both Dr.
Silzars' and Ms. Bennis' opinions regarding
non-infringing alternatives; and (3) Dr. Silzars'
testimony regarding secondary considerations and infringement
by Hyundai products. (D.I. 203 at 1-2).
Rule of Evidence 702 sets out the requirements for expert
witness testimony and states:
A witness who is qualified as an expert by knowledge, skill,
experience, training, or education may testify in the form of
an opinion or otherwise if: (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.
Evid. 702. The Third Circuit has explained:
Rule 702 embodies a trilogy of restrictions on expert
testimony: qualification, reliability and fit. Qualification
refers to the requirement 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. Secondly, the testimony must
be reliable; it must be based on the "methods and
procedures of science" rather than on "subjective
belief or unsupported speculation"; the expert must have
"good grounds" for his or her belief. In sum,
Daubert holds that an inquiry into the reliability
of scientific evidence under Rule 702 requires a
determination as to its scientific validity. Finally, Rule
702 requires that the expert testimony must fit the issues in
the case. In other words, the expert's testimony must be
relevant for the purposes of the case and must assist the
trier of fact. The Supreme Court explained in
Daubert that Rule 7O2's 'helpfulness'
standard requires a valid scientific connection to the
pertinent inquiry as a precondition to admissibility.
By means of a so-called "Daubert hearing,"
the district court acts as a gatekeeper, preventing opinion
testimony that does not meet the requirements of
qualification, reliability and fit from reaching the jury.
See Daubert ("Faced with a proffer of expert
scientific testimony, then, the trial judge must determine at
the outset, pursuant to Rule 104(a) of the Federal Rules of
Evidence whether the expert is proposing to testify to (1)
scientific knowledge that (2) will assist the trier of fact
to understand or determine a fact in issue.").
Schneider ex rel. Estate of Schneider v. Fried, 320
F.3d 396, 404-05 (3d Cir. 2003) (cleaned up).
Mr. Eichmann's Forward Citation Analysis
moves to exclude the portion of Mr. Eichmann's opinions
relating to the calculation of a reasonable royalty due to
Mr. Eichmann's reliance on a forward citation analysis.
(D.I. 212 at 36). Plaintiff argues that Mr. Eichmann's
forward citation analysis is not a reliable principle or
method. (Id.). Defendants argue that forward
citation analysis has been accepted as a reliable method by
multiple courts and Plaintiffs objections go to weight and
credibility, not admissibility. (D.I. 239 at 34-40).
citation analysis is a method of estimating the value of a
particular patent based on the number of times the patent is
cited by later patents. (D.I. 212 at 36). Mr. Eichmann's
forward citation analysis begins with a license agreement
between Plaintiff and OnDIGItech in 2009, which licensed the
'064 application (the parent provisional of all asserted
patents in this case), as well as another provisional
application, for a lump sum of $500, 000 and a royalty of 6%
on gross sales of licensed products. (Id. at 37).
Mr. Eichmann's opinion uses a forward citation analysis
to calculate the relative value of the asserted patents,
using the 6% royalty in the OnDIGItech license as the value
for all granted patents originating from the two
applications. (D.I. 210, Ex. 32 ¶¶ 133-38).
models are fact-dependent." Commonwealth Sci. &
Indus. Research Org. v. Cisco Sys., Inc.,809 F.3d 1295,
1301 (Fed. Cir. 2015). To that end, "there may be more
than one reliable method for estimating a reasonable
royalty." See Apple v. Motorola, Inc., 757 F.3d
1286, 1315 (Fed. Cir. 2014), overruled on other grounds
by Williamson v. Citrix Online, LLC,792 F.3d 1339 (Fed.
Cir. 2015). Multiple courts have found forward citation
analyses to be reliable. See Comcast Cable Comm 'ns,
LLC v. Sprint Comm 'ns Co., LP,218 F.Supp.3d 375,
383-84 (E.D. Pa. 2016); Intel Corp. v. Future Link
Sys., 2017 WL 2482881, at *4 (D. Del. June 1, 2017);
Evolved Wireless, LLC v. Apple Inc., 2019 WL
1178517, at *3-4 (D. Del. Mar. 13, 2019). Forward citation
analysis has an academic pedigree that supports it as a
reliable methodology. See Comcast, 218 F.Supp.3d at
383 nn. 8-9 (citing Dietmar Harhoff, Frederic Scherer, and
Katrin Vopel, Citation, family size, opposition and the
value of patent rights, Research Policy, 1596 (2002);
Bronwyn H. Hall, Adam Jaffe, and Manuel Trajtenberg,
Market Value and Patent Citations, RAND Journal of
Economics 36 (1) (Spring 2005); Manuel Trajtenberg, A
Penny for Your Quotes: Patent Citations and the Value of
Innovations, RAND Journal of Economics 21(1) (Spring
1990); Adam B. Jaffe and Gaetan de Rassenfosse, Patent
Citation Data in Social Science Research: Overview and Best
Practices, Nat'l Bureau of Econ. Research Working
Paper Series (2016), available at
http://www.nber.org/papers/w21868.) Even in Finjan, Inc.
v. Blue Coat Sys., Inc., 2015 WL 4272870, ...