United States District Court, D. Delaware
CIRBA INC. d/b/a DENSIFY and CIRBA IP, INC., Plaintiffs,
VMware, INC., Defendant.
HONORABLE LEONARD P. STARK UNITED STATES DISTRICT JUDGE
before the Court are Daubert motions filed by
Plaintiffs Cirba Inc. and Cirba IP, Inc. (hereinafter
collectively referred to as "Cirba,"
"Densify," or "Plaintiffs") and Defendant
VMware, Inc. ("VMware" or "Defendant").
(See D.I. 411, 414, 415, 416) Having considered the
parties' briefs and related filings, IT IS HEREBY ORDERED
that Density's motion (D.I. 411) is DENIED, VMware's
motion regarding Mr. Bergman (D.I. 414) is DENIED, and
VMware's motion regarding Mr. Mayfield (D.I. 416) is
Density's motion to exclude certain expert testimony of
VMware's damages expert, Mr. Paul K. Meyer, is DENIED.
Density's motion is premised on its contention that the
telemetry data on which Mr. Meyer relies is "survey
data" and that related PowerPoint documents on which Mr.
Meyer relies amount to "summaries." (D.I. 412 at
1-11) The Court disagrees with these characterizations.
Instead, the telemetry underlying Mr. Meyer's opinions is
reporting data collected in the regular course of
VMware's business. (D.I. 435 at 2-8; see also
D.I. 460 at 2-3) Densify's criticisms go to the weight,
not admissibility, of Mr. Meyer's testimony. (D.I. 435 at
Densify's motion to exclude certain expert testimony of
VMware's trademark expert, Dr. Tuan Pham, is DENIED. Dr.
Pham has relevant and adequate qualifications and experience
to support his opinions, including his study of business
consumers. Dr. Pham's reliance on public data does not
render his opinions legally impermissible under Daubert.
See, e.g., Inre Wellbutrin XL Antitrust ZzYzg., 308
F.R.D. 134, 144-45 (E.D. Pa. 2015) (expert qualified based on
education, experience, and analysis of publicly available
pharmaceutical data). Contrary to Densify's view, the
Court is persuaded that Dr. Pham's opinions will not
invade the province of the jury but will, instead, provide
the jury with helpful analysis to consider in making its
parties shall be prepared to address at the pretrial
conference ("PTC") today VMware's motion to
exclude certain expert testimony of Densify's technical
expert, Dr. Vijay Madiserti.
VMware's motion to exclude certain expert testimony of
Densify's damages expert, Mr. Jim Bergman, is DENIED.
VMware attacks Mr. Bergman's opinions on four grounds,
each of which fails to persuade the Court to grant the
the Court finds that VMware's arguments regarding whether
Mr. Bergman's calculations properly account for actual
infringing use go to weight, not admissibility. The Court is
persuaded that Mr. Bergman may reasonably be found to have
accounted for actual infringing use in his royalty rate
analysis. (D.I. 437 at 7-9) VMware's arguments regarding
when Mr. Bergman should have accounted for actual infringing
use, and the correlation between any such use and actual
sales, are directed to the sufficiency of the evidence, which
is not an issue for resolution at this stage. Further, the
Court disagrees with VMware that Mr. Bergman's damages
calculation is not limited to the period during which VMware
could be liable for induced infringement under § 271(b).
(D.I. 417 at 11-12) As Densify argues in its opposition brief
(D.I. 437 at 10), the time at which damages for indirect
infringement began to accrue is an issue for the jury to
Mr. Bergman's opinions are properly grounded in the facts
of the case and not, as VMware argues, based on an arbitrary
rule of thumb like those condemned by the Federal Circuit.
(D.I. 417 at 13-14) Some degree of approximation in expert
testimony is permitted. See, e.g., Virnetx, Inc. v. Cisco
Sys., Inc., 767 F.3d 1308, 1328 (Fed. Cir. 2014)
("[W]e have never required absolute precision in this
task."). Mr. Bergman establishes a logical methodology
to arrive at his DRS apportionment number. VMware's
arguments to the contrary go to the weight, not
admissibility, of the evidence.
the Court disagrees with VMware that "Mr. Bergman's
calculation is based exclusively on anecdotal circumstances
involving a single customer using statements in a single
e-mail." (D.I. 417 at 14) Rather, Mr. Bergman considered
a number of factors in his analysis, including but not
limited to the email referenced by VMware. (D.I. 437 at
13-16) He did focus on one customer as part of his analysis -
explaining why he did so - and, in articulating his reasons,
further illustrated that his opinions are appropriately tied
to the facts of this case. Here, unlike in AVM
Technologies, LLC v. Intel Corp., 927 F.Supp.2d 139 (D.
Del. 2013), which VMware cites, (i) Mr. Bergman considers
patent license agreements that might have more accurately
reflected the value of the '367 patent; (ii) he relies on
a customer and not a settling defendant; and (iii) his
reliance on that customer is only a part of his broader,
multi-factor analysis (which is rooted in, for example,
VMware's own documents and information). (D.I. 437 at
the Court disagrees with VMware's view that Third Circuit
law, including A&H Sportswear, Inc. v. Victoria's
Secret Stores, Inc., 166 F.3d l97(3dCir. 1999), renders
Mr. Bergman's trademark damages opinion excludable. (D.I.
417 at 16-17) In A&H, the Third Circuit noted
the "atypical[ity]" of royalties in trademark
cases; although it held that the royalties awarded by the
district court in that case were unwarranted based on bad
faith, prior licensing, or any "other
justification," it went on to state that "we need
not speculate whether circumstances other than bad faith or a
prior licensing agreement would authorize such an
award." Id. at 208-09. In the instant case, as
explained in Koninkijke Philips Electronics N. V. v. Hunt
Control Systems, Inc., 2016 WL 3545529 (D.N.J. June 29,
2016), cited by Densify, non-license-based royalties may be
available because A&Honly addressed two
circumstances, and because Densify does allege bad faith.
VMware's motion to exclude certain expert testimony by
Densify's trademark expert, Mr. Vincent Mayfield, is
GRANTED. While the Court does not agree with VMware that Mr.
Mayfield's opinions are improper expert testimony (D.I.
417 at 17-19), it does agree with VMware that Mr. Mayfield
lacks the qualifications to offer such opinions (id.
at 19-20). Mr. Mayfield's qualifications rest largely on
his significant experience as an IT professional. (D.I. 437
at 20) While practical experience can be grounds for
qualifying an expert under Daubert (see, e.g., Santos v.
Posadas De Puerto Rico Assocs., Inc., 452 F.3d 59, 64
(1st Cir. 2006)), a qualified expert must provide some
reliable methodology or principles by which he formed his
opinion. Mr. Mayfield has not done so here.
parties shall be prepared to address at the PTC today any
remaining Daubert-related issues not already
resolved by this Order, as well as the pending claim
construction/summary judgment issues.
VMware's motion for leave to file an additional motion
in limine (D.I. 450) is DENIED. The Court rarely
permits additional such motions and ...