Infringement Expert Excluded Where Expert Did Nothing More Than Parrot Claim Language in Infringement Analysis

by Jeffer Mangels Butler & Mitchell LLP

Plantronics, Inc. ("Plantronics") filed a patent infringement action against ALIPH, Inc. ("ALIPH"). After expert reports were submitted, ALIPH moved to exclude the expert report of Plantronics' infringement expert.

At the heart of the action is the fit of ear buds in a human ear. However, the district court found that Plantronics' expert had done very little infringement analysis in this regard. As the district court explained, "plaintiff's infringement expert, Professor Katz, did nothing more than try defedants' products on various (unidentified) ear molds and state that defendants' products infringed based on conclusory ipse dixit recitations of claim limitations with no explanation or analysis."

The district court found that such an analysis would not be helpful to the jury and also found that the infringement expert had not conducted any quantitative analysis. "Professor Katz never conducted any quantitative analysis (i.e., size, measurements, dimensions, or positioning) of the earbuds, headsets, and ear molds he examined even though at oral argument, the parties agreed that a critical dispute in this action is whether the accused products are "dimensioned to contact an upper concha" as recited in asserted claim 10 (Katz Dep. 92:14-24, 104:9-17, 227:7-17). Professor Katz also never even identified which particular ear molds -- of the sixty ear molds on plaintiff's Wall of Ears -- he tested. His reliance on Exhibit 304, which contains the dimensions of the accused products, and his "visual examination" of the products do not suffice. In a declaration, he also admitted that the photographs in his report were to "illustrate the points" in his report and in deposition, he admitted counsel chose the photographs. He could not even identify which molds were depicted in the photographs (Katz Dep. 78:25-80:9, 228:1-5)."

The district court also questioned the qualifications of the infringement expert, noting that "Professor Katz does not have an engineering degree and, indeed, the parties agree that he does not qualify as a person of ordinary skill in the art as defined by Magistrate Judge Zimmerman (Dkt. No. 142 at 3, n. 2)."

The district court still found that his qualifications alone were not sufficient to strike him. "His qualifications do not, on their own, suffice to strike him because his industrial design and physical examination of the accused products could be of aid."

Nonetheless, the district court concluded that the infringement expert should be stricken because of his mere parroting of the claim language. "What justifies striking him at the end of the day is that his report merely parroting the claim language to find infringement will be unhelpful to the jury. Bald claim-ridden statements -- with no analysis -- that simply proclaim that defendants' products infringe cannot help the jury in making their findings. FRE 702 permits expert testimony by a qualified expert using his scientific, technical, or other specialized knowledge to help the trier of fact understand the evidence or determine the facts in issue. Professor Katz's ipse dixit statements in his report fail on this ground and thus his testimony is now disallowed."

Plantronics, Inc. v. ALIPH, Inc., et al., Case No. C 09-01714 WHA (N.D. Cal. Feb. 20, 2014)

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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