United States District Court, D. Delaware
ANDREWS, U.S. DISTRICT JUDGE
before the Court is Plaintiffs Motion to Exclude the Expert
Opinions of Cathleen Thomas Quigley Regarding Written
Description and Enablement, or in the Alternative, for
Summary Judgment. (D.I. 367). I have reviewed the
parties' briefing and heard oral argument. (D.I. 368,
396, 413, 471).
September 2015, Plaintiff ChanBond, LLC filed thirteen suits
against numerous defendants (collectively,
"Defendants") asserting infringement of U.S. Patent
Nos. 7, 941, 822 ("the '822 Patent"), 8, 341,
679 ("the '679 Patent"), and 8, 984, 565
("the '565 Patent"). (See, e.g., D.I.
1 (complaint against Atlantic Broadband Group, LLC)). The
actions were consolidated for all pre-trial purposes. (D.I.
instant dispute, Plaintiff challenges three written
description opinions offered by Defendants' expert, Ms.
Quigley: (1) that the asserted patents lack written
description support for an "intelligent device"
that receives data directly from, or transmits data directly
to, a cable headend as claimed (the '822, '679, and
'565 patents); (2) that the asserted patents lack written
description support for an "intelligent device"
that receives "channel in use information which
identifies each channel in the modulated RF signal that
includes information addressed to at least one addressable
device" (the '822 and '679 patents); and (3)
that the asserted patents lack written description support
for an "intelligent device" that
"receives" channel in use information rather than
one that "generates" channel in use information
(the '822, '679, and '565 patents). (D.I. 396 at
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.
Fed. R. 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 o[r] 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
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) (footnote and internal
written description requirement of 35 U.S.C. § 112,
¶ 1 requires that the specification "clearly allow
persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed." AriadPharm.
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en banc) (alteration in original) (internal
quotation marks omitted). "[T]he purpose of the written
description requirement is to 'ensure that the scope of
the right to exclude, as set forth in the claims, does not
overreach the scope of the inventor's contribution to the
field of art as described in the patent
specification.'" Univ. of Rochester v. G.D.
Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004).
"In other words, the test for sufficiency is whether the
disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession
of the claimed subject matter as of the filing date."
Ariad, 598 F.3d at 1351. The written description
inquiry is a question of fact. See Id. "A party
must prove invalidity for lack of written description by
clear and convincing evidence." Vasudevan Software,
Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed.
court shall grant summary judgment if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law."
Fed.R.Civ.P. 56(a). The moving party has the initial burden
of proving the absence of a genuinely disputed material fact
relative to the claims in question. Celotex Corp. v.
Catrett, 411 U.S. 317, 330 (1986). Material facts are
those "that could affect the outcome" of the
proceeding, and "a dispute about a material fact is
'genuine' if the evidence is sufficient to permit a
reasonable jury to return a verdict for the nonmoving
party." Lamont v. New Jersey, 637 F.3d 177, 181
(3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc.,
411 U.S. 242, 248 (1986)). The burden on the moving
party may be discharged by pointing out to the district court
that there is an absence of evidence supporting the
non-moving party's case. Celotex, 477 U.S. at
burden then shifts to the non-movant to demonstrate the
existence of a genuine issue for trial. Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87
(1986); Williams v. Borough of West Chester, Pa.,
891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving party
asserting that a fact is genuinely disputed must support such
an assertion by: "(A) citing to particular parts of
materials in the record, including depositions, documents,
electronically stored information, affidavits or
declarations, stipulations . . ., admissions, interrogatory
answers, or other materials; or (B) showing that the
materials cited [by the opposing party] do not establish the
absence ... of a genuine dispute ...." Fed.R.Civ.P.
determining whether a genuine issue of material fact exists,
the court must view the evidence in the light most favorable
to the non-moving party and draw all reasonable inferences in
that party's favor. Scott v. Harris, 550 U.S.
372, 380 (2007); Wishkin v. Potter, 476 F.3d 180,
184 (3d Cir. 2007). A dispute is "genuine" only if
the evidence is such that a reasonable jury could return a
verdict for the non-moving party. Anderson, 411 U.S.
at 247-49. If the non-moving party fails to make a sufficient
showing on an essential element of its case with respect to
which it has the burden of proof, the moving party is
entitled to judgment as a matter of law. See Celotex
Corp., 477 U.S. at 322.
'822 patent is directed to an intelligent device system
and method for distribution of digital signals on a wideband
signal distribution system. ...