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District Court Excludes Technical Expert’s Infringement Opinion Based on Sales and Offers to Sell Method Claims as Contrary to Law

In this ongoing patent infringement action, the District Court continued to issue rulings on the Daubert motions filed by the defendant, Labcorp.  Ravgen’s technical expert, Brian Van Ness, offered two opinions: (1) the asserted claims, which are all method claims, are infringed by offering to sell and/or sale; and (2) there are induced infringement and willful infringement with the requisite intent.  Labcorp moved to exclude both opinions as contrary to the law.

With respect to the first opinion, whether method claims can be infringed by a sale or an offer for sale, the district court explained that Chapter 35 of the United States Code, Section 271(a) provides: “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term therefor, infringes the patent.”  The district court also explained that the Federal Circuit stopped “an inch away from deciding the broader question of whether a method claim may be infringed under the ‘sells’ and ‘offer to sell’ prongs of § 271(a).” Isis Pharms., Inc. v. Santaris Pharma A/S Corp., No. 3:11-CV-2214-GPC-KSC, 2014 WL 2531973, at *3 (S.D. Cal. June 4, 2014) (interpreting NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1320–21 (Fed.Cir.2005)).

After noting the above and that this unanswered question has caused a split of authority, the district court joined “the group of courts that have ruled that a patent holder may not base its infringement claims on the sale or offer for sale of a patented method. To be infringed, a method must be performed.”

Accordingly, the expert’s opinion to the contrary was excluded as not supported by the law.

With respect to the second opinion, LabCorp argued that Dr. Van Ness merely identifies and summarizes deposition testimony, Labcorp’s responses to written discovery, and produced documents to ascribe intent to Labcorp in order to conclude that Labcorp “knows, or was willfully blind.

The district court agreed that “Dr. Van Ness’s opinions contained in paragraphs 611-626, 672-686 of his opening report merely identifies and summarizes discovery, and there is no helpful expert analysis of this discovery. In paragraph 687, Dr. Van Ness explains an interpretation of an experiment to a jury, which is permissible under Daubert. Paragraphs 627 and 628 are permissible opinions of direct infringement, not summaries of evidence.”

Thus, the district court excluded the second opinion as well.


Ravgen, Inc. v. Laboratory Corp. of American Holdings, Case No. 6:20-cv-00969-ADA (W.D. Tex. Oct. 3, 2022)


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