Abaxis v. Cephied: Technical Expert Allowed to Testify Even Though He Had No Personal Experience with Technology but Opinions on Commercial Success and Copying Excluded

August 9, 2012

Plaintiff Abaxis, Inc. ("Abaxis") moved to exclude the testimony of Cepheid's technical expert because the expert had no personal experience with the technology at issue and because the expert was offering opinions on commercial success and copying. The district court granted the motion in part and denied the motion in part.

As explained by the district court, "Abaxis does not dispute Dr .William's qualifications as an expert. Rather, Abaxis contends that Dr. Williams has no personal experience with the designing or making of freeze-dried materials and lyophilization, rendering his opinions on these topics inadmissible under Rule 702 due to lack of proper foundation. Mot. 1, 3. According to Abaxis, Dr. William's deposition revealed that he was so inexperienced in these matters that his testimony on such subjects would be unreliable. Id. At 3. Thus, Abaxis argues, any opinions of Dr. Williams that require knowledge of the design or manufacture of freeze-dried materials and lyophilization, including his technical evaluation of lyophilipzation or whether the prior art is enabling, are inadmissible under Daubert. Id."

The district court disagreed with Abaxis's argument, finding that the expert's background and experience were sufficient to permit him to testify: "The Court is not persuaded by Abaxis's arguments, all of which argue, in some form or another, that Dr. William's lack of personal knowledge renders his testimony inadmissible. While Abaxis is correct that Dr. Williams never personally executed a freeze-drying or lyophilization procedure, the record indicates that Dr. Williams was, indeed, familiar with such procedures. In fact, the record makes clear that Dr. Williams's research group had experienced with freeze-drying and lyophilization procedures and that Dr. Williams has directed students in his laboratory who have conducted these procedures. See Carlson Decl. Ex. H, at 12; Williams Dep. 18:9-12, 19:5-6. This experience, combined with Dr. Williams's extensive training in the field of pharmacy, is sufficient to render his opinion on freeze-drying and lyophilization admissible under Rule 702. See Carlson Decl. Ex. H at 3-7."

Abaxis also moved to exclude the non-technical opinions of Cepheid's expert, including what it termed "legal opinions" and opinions on commercial success and copying. With respect to the "legal opinions," the district court agreed with Abaxis, although only in a limited way: "The Court agrees with Abaxis that Dr. Williams cannot offer his opinion on purely legal matters. Cf. McHugh v. United Serv. Auo Ass'n, 164 F.3d 451, 454 (9th Cir. 1999) ('[Expert] testimony cannot be used to provide legal meaning....'). Accordingly, Abaxis's motion to exclude Dr. Williams's opinions on legal matters in GRANTED. This grant is narrow, however, and only bars Dr. Williams from offering his opinion on legal conclusions, such as the legal rights or obligations of various parties or the legal effects of particular agreements. It does not preclude Dr. Williams from testifying about technical maters related to the various agreements mentioned above. As Cepheid rightly points out, Dr. Williams's opinion as to whether the products in the above agreements embodied the asserted claims is admissible. See Fed. R. Evid. 704(a) ('An opinion is not objectionable just because it embraces an ultimate issue.'). Nevertheless, any legal conclusions Dr. Williams might have, such as whether a particular agreement constitutes an "offer for sale" is herby excluded."

With respect to commercial success, the district court found: "The Court is persuaded by Abaxis's arguments and agrees that Dr. Williams's opinion on whether or why any product enjoys commercial success in inadmissible. Nothing in Dr. Williams's qualifications indicates that he is qualified to testify as an expert on such topics. Dr. Williams is an expert in pharmacy, not in sales, marketing, or consumer preferences and demand. See Rodriguez Decl. Ex. 3 at 8-10. Accordingly, Abaxis's motion to excluded Dr. Williams's opinions on commercial success is GRANTED. Dr. Williams may not speculate as to what he believes is responsible for the commercial success of Abaxis's process and beads. However, Dr. Williams may educate the jury on whether Abaxis's process and beads contain technology in the prior art or other features not claimed in the patents-in-suit. The jurors are free to draw their own conclusions as to whether the evidence establishes that the patented features, rather than other features, drive the sale of Abaxis's process and beads. See Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006) ('Evidence of commercial success...is only significant if there is a nexus between the claimed invention and the commercial success.')"

In terms of copying, the district court sided with Abaxis on the ultimate question of copying but did permit testimony on the comparison of the technologies: "Dr. Williams is not entitled to offer his opinion as to the ultimate question of whether Cepheid copied Abaxis. Accordingly, insofar as Abaxis's motion objects to such an opinion, it is GRANTED. Nevertheless, Dr. Williams will be allowed to give his opinion regarding the comparison of the technologies of the parties, the development of Cepheid's process, and whether the parties' technologies were well-known in the art. Such subjects are beyond the scope of a layperson's experience and within Dr. William's expertise. Dr. Williams's testimony on these subjects is therefore proper, and to the extent Abaxis's motion seeks to exclude such testimony, it is DENIED."

Abaxis v. Cepheid, Case No. 10-CV-02840-LHK (N.D. Cal. July 19, 2012)

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