Court Denied Motion to Exclude Expert Testimony That Relied on Consumer Survey to Establish Evidence of Infringement

May 11, 2012

Pact XPP Technologies ("Pact") filed a patent infringement action against Xilinx, Inc. ("Xilinx") and other defendants. Xilinx filed a motion to exclude Pact's expert's testimony on inducement. Pact claimed that the defendants induced Xilinx customers to infringe the asserted patents and presented expert witness to offer an opinion that Xilinx actively induces infringement, which in part relied on consumer survey evidence.

The court began it analysis by noting that "[a]n expert witness may provide opinion testimony 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 issues; (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. A trial court is 'charged with a 'gatekeeping role,' the objective of which is to ensure that the expert testimony admitted into evidence is both reliable and relevant.' Sundance, Inc., v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1360 (Fed. Cir. 2008).

Xilinx asserted that the expert's opinion is not based on sufficient facts or data because it relied on a consumer survey of some Xilinx customers, but the evidence did not show that customers used the features in an infringing way. Xilinx also asserted that the evidence did not show that any direct infringement occurred in the United States.

The court disagreed: "[t]he Court finds that there are sufficient facts and data to support Dr. Tredennick's active inducement opinion. If Dr. Tredennick testifies that any use of the RocketIO, Embedded EMAC or Integrated PCI features built into Xilinx's accused products directly infringes PACG's patents, then the customer survey evidence could support a finding of direct infringement. Furthermore, based on the representations of the nature of the survey evidence, there appears to be at least some evidence that direct infringement occurred in the United States. Any weakness in Dr. Tredennick's opinion or the evidence he relies upon can be tested through cross-examination Xilinx's objection is overruled."
Xilinx also objected that the opinion would not be helpful to the jury. "First, Xilinx argues that Dr. Tredennick's opinion goes to 'Xilin's state of mind or knowledge,' and he relies on common sense to opine that Xilinx had the specific intent to induce customers to infringe." Dkt. No. 187 at 10. Second, Xilinx contends that Dr. Tredennick 'concludes that Xilinx 'likely' knew of the asserted patents and patent applications in December 2000 because Xilinx allegedly conducted due diligence on Pact, although he is not an expert on business practices related to mergers and acquisitions.' Id. Pact responds that other courts, including the Federal circuit, have 'relied explicitly on expert evidence of intent in affirming a finding of induced infringement.' Dkt. No. 218 at 8-10. See Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1323 (Fed. Cir. 2008), and ClearValue, Inc. v. Pearl River Plymers, Inc., 735 F. Supp. 2d 560, 575-76 E.D. Tex. 2010) (Davis, J.).

The court then concluded, based on its review of the relevant portions of the expert report, that the expert report would be helpful to the fact-finder. The court also found that the expert would not testify to Xilinx's state of mind, but instead wold testify that the accused products are designed in such a way that their intended use infringes the asserted patents.

Accordingly, the court denied the motion to exclude.

Pact XPP Technologies, AG v. Xilinx, Inc., et al., Case No. 2:07-CV-563-RSP (E.D. Tex. April 25, 2012)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or