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Even though Defendant filed Disguised Daubert Motion that Court Called “Untimely” and “Lame,” the District Court Granted the Motion in Part to Exclude Expert from Opining on Legal Standards

In this patent infringement action, Defendant R/X Automation Solutions filed a motion in limine to exclude one of plaintiff’s experts. The district court concluded that the motion was an untimely Daubert motion because the district court had set a deadline for dispositive motions and Daubert motions.

The district court was not impressed with the excuse for the late filing. “Defendant’s excuse that it could not have known of the bases for the motion until after it took depositions of the experts is lame. Defendant had Dr. Derby’s report, for example, before the due date for Daubert motions. Everything that the ‘motion in limine’ complains of with respect to Dr. Derby is plain to see on the face of his report.”

Nevertheless, the district court decided it would address the motion on the merits because trial was approaching in the next two weeks.

The district court then turned specifically to Dr. Derby’s report and noted “[h]e appears to be well qualified to testify, for example, about how the various pill-counting machines work. He appears to be well qualified to compare the features of one machine to another. His technical knowledge of machine and engineering concepts will undoubtedly be of assistance to the jury.”

But the district court also found that the report did not match the expert’s experience. “I find that much of it has nothing to do with his expertise as a mechanical engineer. Rather, it is apparent that counsel put him up to signing a document that, in very large part, expresses opinions that are not within his expertise. It is apparent that counsel drafted substantial parts of the purported Derby report and hope to use Dr. Derby essentially as a puppet through which counsel will lecture the jury on the law and why Knapp should win the case. This report goes far beyond the normal and appropriate cooperation of counsel and expert.”

In particular, the district court found the expert’s report on legal standards was inappropriate. “For example, section VII of Dr. Derby’s report bears the heading, ‘Legal Standards.’ ECF No. 152-2 at 8. After acknowledging that he is not a legal expert, Dr. Derby sets forth in paragraph after paragraph his “understanding” of the applicable legal standards, even citing supporting case law. He expresses his “understanding” of such things as independent and dependent claims, the doctrine of claim differentiation, what a plaintiff must prove to establish infringement, contributory infringement, induced infringement, intent to encourage infringement, literal infringement, the doctrine of equivalents, etc. None of that is within his expertise. At best he has been spoon-fed the legal concepts and theories of counsel. Giving him the benefit of the doubt, I will assume that he was told that it is normal and proper for an expert to sign off on a report containing what amounts to a legal brief or a patent law seminar. It is neither normal nor proper.”

The district court then explained that the expert could opine on factual issues but on ultimate legal conclusions. “He can describe how features of the various products discussed in that section operate (but not speculate on what RXAS is attempting to re-argue or attempting to do and not comment on any product as to which the Court has granted summary judgment). If given the Court’s definition of a term, he can express an opinion as to whether an accused product does or does not operate in a manner consistent with that definition.”

The district court the ordered the parties to follow this guidance in presenting the testimony with respect to the rest of the report. “I need not go through his 62-page report line by line and coach counsel as to what Dr. Derby can and cannot do, nor do I need to review his supplemental report. ECF No. 152-1. Counsel surely gets the drift and, since they hope to be effective advocates at trial, they will conform their questioning of Dr. Derby to the letter and spirit of this order. Otherwise, they are in for repeated interruptions of testimony, exclusions of testimony, and admonitions from the Court.”

Knapp Logistics & Automation, Inc. v. R/X Automation Solutions, Inc., Case No. 14-cv-00319-RBJ (D. Col. Sept. 24, 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or