Commercial Litigation and Arbitration

Daubert : Proponent’s Burden Is Reliability, Not Correctness — Non-Lawyer Technical Expert May Opine on Infringement

 Arason Enters. v. CabinetBed Inc., 2019 U.S. Dist. LEXIS 162008 (D. Colo. Sept. 23, 2019):

This matter is before the Court on Defendant CabinetBed Inc.'s Motion to Exclude Testimony of Adrian Slattery on Alleged Infringement [Docket No. 62] and Defendant CabinetBed Inc.'s Motion to Exclude Testimony of René Poulin [sic] on Alleged Invalidity [Docket No. 63]. Plaintiff filed a response to both motions [Docket Nos. 73, 74], to which defendant replied. Docket Nos. 76, 77.


Plaintiff Arason Enterprises, Inc. asserts claims of patent infringement against defendant CabinetBed Inc. related to defendant's sale of Murphy-style "cabinet beds" wherein a folded mattress is contained inside a chest-shaped piece furniture and can be deployed as a bed. Docket No. 5 at 2, ¶ 6, at 4, ¶ 24; see generally id. at 6-7. Plaintiff is the assignee of United States Patent No. 7,574,785 ("the '785 patent"), a utility patent [*2]  entitled "FOLDING CABINET BED WITH TELESCOPING SLIDE-OUT SUPPORT PLATFORM." Docket No. 75 at 4, ¶ 14. The invention's structure is described as a "folding cabinet bed [that] includes a cabinet of sufficient size to enclose a standard size folded futon mattress, and allows the mattress to be deployed as a bed." Docket No. 40-2 at 1. The cabinet structure contains a drawer that extends via telescoping rails. '785 Patent at col. 5, ll. 26-32. W hen the telescoping rails are extended, the extendable structure provides support for the sleeping platform, which is formed from the front wall of the cabinet, an extension panel, and the mattress contained in the cabinet. Id., ll. 36-53.


'785 patent, Fig. 5. Plaintiff alleges that defendant has infringed upon claim 1 of the '785 patent. Docket No. 75 at 4, ¶ 16. Claim 1 is directed to, among other things, "[a] folding cabinet bed system, comprising[] a cabinet assembly, comprising[] [an] extendable structure [that] supports said front wall and said extension panel when said front wall and said extension panel are in the open position." '785 patent, claim 1, ll. 7:49-51, 8:35-37. Specifically, plaintiff alleges that defendant's "Stanley" cabinet bed infringes upon the '785 patent:


Docket No. 1-2 at [*3]  6. The accused invention also has an extendable drawer at the bottom of its structure, but this drawer does not extend the full length of the extension panel, which reaches approximately fifty-five inches. Docket No. 62-1 at 12, ll. 22-24. Instead, this drawer extends eighteen inches. Id., ll. 20-21.

This Court issued a claim construction order on September 30, 2018 in which the Court construed the parties' disputed claim terms. Docket No. 54. Defendant has now filed motions to exclude the opinions of two of plaintiff's expert witnesses. Docket Nos. 62, 63.


Rule 702 of the Federal Rules of Evidence provides that:

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. As the rule makes clear, while required, it is not sufficient that an expert [*4]  be qualified based upon knowledge, skill, experience, training, or education to give opinions in a particular subject area. Rather, the Court must "perform[] a two-step analysis." 103 Investors I, L.P. v. Square D Co., 470 F.3d 985, 990 (10th Cir. 2006). After determining whether the expert is qualified, the proffered opinions must be assessed for reliability. See id.; Fed. R. Evid. 702 (requiring that the testimony be "based on sufficient facts or data," be the "product of reliable principles and methods," and reflect a reliable application of "the principles and methods to the facts of the case").

Rule 702 imposes on the district court a "gatekeeper function to 'ensure that any and all scientific testimony or evidence admitted is not only relevant, but reliable.'" United States v. Gabaldon, 389 F.3d 1090, 1098 (10th Cir. 2004) (quoting Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 589, 113 S. Ct. 2786, 125 L. Ed. 2d 469 (1993)). To perform that function, the Court must "assess the reasoning and methodology underlying the expert's opinion, and determine whether it is both scientifically valid and applicable to a particular set of facts." Dodge v. Cotter Corp., 328 F.3d 1212, 1221 (10th Cir. 2003) (citing Daubert, 509 U.S. at 592-93). Where an expert witness relies on experience, the expert "'must explain how that experience leads to the conclusion reached, why that experience is a sufficient basis for the opinion, and how that experience is reliably applied to the facts.'" United States v. Medina-Copete, 757 F.3d 1092, 1104 (10th Cir. 2014) (quoting Fed. R. Evid. 702, advisory committee notes). When [*5]  examining an expert's method, however, the inquiry should not be aimed at the "exhaustive search for cosmic understanding but for the particularized resolution of legal disputes." Daubert, 509 U.S. at 597. It is the specific relationship between an expert's method, the proffered conclusions, and the particular factual circumstances of the dispute that renders testimony both reliable and relevant.

In addition to the witness having appropriate qualifications and methods, the proponent of the witness' opinions must demonstrate that the process by which the witness derived his or her opinions is reliable. United States v. Crabbe, 556 F. Supp. 2d 1217, 1220 (D. Colo. 2008). "[T]he trial judge must have considerable leeway in deciding in a particular case how to go about determining whether particular expert testimony is reliable." Kumho Tire Co. v. Carmichael, 526 U.S. 137, 152, 119 S. Ct. 1167, 143 L. Ed. 2d 238 (1999). Ultimately, the test requires that the expert "employs in the courtroom the same level of intellectual rigor that characterizes the practice of an expert in the relevant field." Id.

While the proponent of the challenged testimony has the burden of establishing admissibility, the proffer is tested against the standard of reliability, not correctness, see Allstate Sweeping, LLC v. City & Cty. of Denver, No. 10-cv-00290-WJM-MJW, 2011 U.S. Dist. LEXIS 58775, 2011 WL 2173997, at *3 (D. Colo. June 2, 2011); the proponent need only prove [*6]  that "the witness has sufficient expertise to choose and apply a methodology, that the methodology applied was reliable, that sufficient facts and data as required by the methodology were used and that the methodology was otherwise reliably applied." Crabbe, 556 F. Supp. 2d at 1221.

Assuming the standard for reliability is met, the Court must also ensure that the proffered testimony will assist the trier of fact. See Kumho Tire, 526 U.S. at 156; United States v. Rodriguez-Felix, 450 F.3d 1117, 1122-23 (10th Cir. 2006). "Relevant expert testimony must logically advance[] a material aspect of the case and be sufficiently tied to the facts of the case that it will aid the jury in resolving a factual dispute." United States v. Garcia, 635 F.3d 472, 476 (10th Cir. 2011) (internal quotation marks and citations omitted). In assessing whether expert testimony will assist the trier of fact, the Court should also consider "whether the testimony 'is within the juror's common knowledge and experience,' and 'whether it will usurp the juror's role of evaluating a witness's credibility.'" Id. at 476-77 (quoting Rodriguez-Felix, 450 F.3d at 1123).


A. Adrian Slattery

Defendant seeks to exclude two opinions in Mr. Slattery's expert report. First, it seeks to exclude Mr. Slattery's opinion "that Cabinetbed's 'Standard' cabinet bed infringes on at least Claim 1 of the '785 patent." Docket No. 61-1 at 3, ¶ 10. Second, it seeks to exclude [*7]  Mr. Slattery's opinions "set forth . . . on pages 21 and 36-38 of [his] accompanying chart." Docket No. 62 at 2. On these pages, Mr. Slattery opines (1) that the accused structure contains a "support piece" that is "configured to prop up the top piece," Docket No. 61-1 at 28; (2) that the accused structure has an extendable structure that "supports the opened front wall and opened extension panel," id. at 43; and (3) that the accused structure contains "telescoping rails" that are "sized and configured to accommodate the size of the front wall and extension panel." Id. at 44-45. Essentially, these three opinions provide one of the bases for Mr. Slattery's opinion that the accused structure infringes upon claim 1 of the '785 patent.

1. Opinion on infringement

Defendant argues that Mr. Slattery's infringement opinion should be excluded because "he does not understand the framework for performing a proper infringement analysis." Docket No. 62 at 6; see also id. at 4 ("Mr. Slattery has no understanding of literal infringement."). Defendant does not challenge Mr. Slattery's qualifications to testify as an expert. See Docket No. 76 at 8. The fact that Mr. Slattery is not a patent lawyer does not disqualify him from offering an opinion [*8]  on infringement. See Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (rejecting notion that "only lawyers or patent lawyers can be expert witness[es] in a patent suit"); see also Robert A. Matthews, Jr., 7 Annotated Patent Digest § 44:70 (June 2019) ("Technical experts showing they have the necessary technical knowledge of the subject matter covered by the patent at issue to be qualified to render opinion testimony are permitted to testify as to the issue of infringement. Such experts must know the technology, but need not know in detail patent law.").

Defendant argues that the methodology from which Mr. Slattery drew his infringement opinion is flawed because he did not perform a proper infringement analysis. Specifically, defendant challenges the fact that Mr. Slattery did not review the Court's Markman order [Docket No. 54] and did not consider the '785 patent's specification in forming his opinion that the accused product infringes the '785 patent. Docket No. 62 at 4-5. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217, 61 S. Ct. 235, 85 L. Ed. 132, 1941 Dec. Comm'r Pat. 802 (1940) ("The claims of a patent are always to be read or interpreted in the light of its specifications."); see also Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1321 (Fed. Cir. 2009) ("No party may contradict the court's claim construction to a jury."). Plaintiff counters that Mr. Slattery followed proper principles and methodology in [*9]  forming his infringement opinion because he "took the claim as construed by the Court and analyzed the construed limitations vis-á-vis the Accused Instrumentality," and considered several other sources in forming his opinion, as set out in his expert report. Docket No. 73 at 7-8. Specifically, Mr. Slattery's report states that, in preparation of his report, he (1) "spoke[] with Plaintiff's counsel"; (2) "reviewed the Plaintiff's Complaint"; (3) "reviewed the Defendant's Answer"; (4) "reviewed written discovery from the lawsuit"; (5) "reviewed the Plaintiff's Final Infringement Contentions"; and (6) "examined Cabinetbed's 'Standard' cabinet bed." Docket No. 61-1 at 1-2, ¶ 5. Further, although Mr. Slattery testified at his deposition that he did not read the Court's claim construction order, he also stated that he received from plaintiff's counsel the constructions set out in the order and used those definitions in forming his infringement opinion. Docket No. 62-1 at 6, ll. 8-16.

Despite defendant's argument that Mr. Slattery used a "flawed methodology" in forming his opinions, the Court finds that its argument actually goes towards whether Mr. Slattery relied upon sufficient facts and [*10]  data. See Docket No. 62 at 4-5 (arguing that Mr. Slattery did not perform a proper infringement analysis because he did not review the claim construction order or the patent's disclosure in forming his infringement opinion). Neither party sets forth an argument as to what it considers a "proper infringement analysis" with regard to the requisite facts and data sufficient to support to a finding of infringement.

The Court finds, however, that Mr. Slattery relied upon sufficient facts and data in supporting his opinions. He reviewed the complaint and the answer and was aware of plaintiff's infringement contentions and defendant's response thereto. He also examined the accused structure in person, which included deconstructing and rebuilding the device as well as building "a 3-D model" of the accused device. Docket No. 73 at 7. And although Mr. Slattery did not read the Court's claim construction order in full, he was given the Court's claim constructions by plaintiff's counsel and he used those definitions in forming his opinion. Docket No. 62-1 at 6, ll. 12-14. Indeed, although the failure to read the Court's Markman order deprived Mr. Slattery of important context in utilizing the Court's [*11]  claim constructions, defendant has not articulated why this lack of context renders Mr. Slattery's testimony inadmissible. The Court finds that, as a whole, Mr. Slattery relied upon sufficient facts and data to form his opinion on infringement. See LTJ Enters. v. Custom Mktg. Co., LLC, 168 F. Supp. 3d 1202, 1209 (D. Minn. 2016) (finding that an expert who had examined the accused device, the patented device, the patent, and the court's claim construction order had "examined the items most germane to forming an infringement opinion in [the] case" and thus his opinion was based on sufficient facts and data); see also Inline Connection Corp. v. AOL Time Warner Inc., 472 F. Supp. 2d 604, 612 (D. Del. 2007) (rejecting argument that expert's report was not supported by sufficient facts and data when expert had read the patents and prosecution histories, the court's claim construction order, the declarations of opposing experts, and other literature, and had relied on his knowledge in the field in forming his opinions). Mr. Slattery's opinion on infringement will not be excluded.



Admissibility of expert testimony in a patent suit is governed by the law of the regional circuit in which the district court resides. Micro Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1390-91 (Fed. Cir. 2003).

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