Federal Rule of Evidence 702 provides that an expert witness may testify if he or she ” is qualified as an expert by knowledge, skill, experience, training, or education.” Under Daubert v. Merrell Dow and Rule 702, courts are charged with a gatekeeping role, the objective of which is to ensure that expert testimony admitted into evidence is both reliable and relevant. Sundance v. DeMonte. Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed.R.Evid. 702. Sundance. Admission of expert testimony is within the discretion of the trial court, and the decision is reviewed on appeal for abuse of discretion. Id.
Below are district court decisions on expert’s qualifications to give a damages opinion for the period January 1, 2010 to November 7, 2019. The table only includes court opinions about the expert’s qualifications, and not about the expert’s methodology or other aspects of the testimony. These decisions generally arose in the context of a Daubert motion.
| SECOND CIRCUIT | |||
| S.D.N.Y. | Koninklijke Philips Electronics NV, et. al. v. Cinram International Inc., et. al., 7-08-cv-00515 (S.D.N.Y. Nov. 4, 2011) | Excluded | Plaintiff’s motion to strike defendant’s rebuttal expert report is granted because the rebuttal report goes beyond the scope of the subject matter for which the expert has been qualified, and into the area of damages, which is beyond the expert’s expertise. |
| N.D.N.Y. | Advanced Fiber Technologies (AFT) Trust v. J & L Fiber Services, Inc., 1-07-cv-01191 (N.D.N.Y. Mar. 31, 2015) | Not excluded | Defendant’s motion to exclude the testimony of plaintiff’s damages expert as unqualified is denied because the expert is a founding member of an intellectual capital firm, which provides intellectual property expert services, valuation, asset and risk management, and corporate finance; has fifteen years of experience participating in the determination of damages in commercial litigation, in most cases, for intellectual property infringement claims; has studied economics as part of his MBA and as an undergraduate and has also taught a graduate level course that included a class on lost profits; and has testified regarding lost profits in at least four other trials and a number of other cases. |
| S.D.N.Y. | On Track Innovations Ltd. v. T-Mobile USA, Inc., 1-12-cv-02224 (S.D.N.Y. April 3, 2015) | Not excluded | Plaintiff’s motion to exclude the testimony of defendant’s damages expert as unqualified is denied because the expert possesses degrees in electrical sciences and engineering, has an MBA, and has been an advisor to leading market actors in the relevant field for several decades. |
| THIRD CIRCUIT | |||
| D.N.J. | Warner-Lambert Compa, et al. v. Purepac Pharmaceutic, et al., 2-00-cv-02931 (D.N.J. April 8, 2011) | Excluded | Defendant’s motion to exclude the testimony of plaintiff’s attorney and lobbyist expert is partially granted because the expert is not an economic or business expert, and thus s not qualified to opine on what actions any of the generic manufacturers in this case would have taken in the ‘but for’ world regarding lost profits. |
| W.D. Pa. | Carnegie Mellon University v. Marvell Technology Group, Ltd., et. al., 2-09-cv-00290 (W.D. Pa. Dec. 15, 2012) | Not excluded | Defendant’s motion to exclude the testimony of plaintiff’s damages expert as unqualified is denied because the expert is qualified to render a general damages opinion given her bachelor’s degree in finance and economics and extensive consulting work over her twenty-seven year career. |
| D. Del. | SRI International Inc. v. Cisco Systems Inc., 1-13-cv-01534 (D. Del. April 11, 2016) | Not excluded | Defendant’s motion to exclude the testimony of plaintiff’s expert regarding apportionment as unqualified is denied; defendant is free to challenge the expert’s conclusions and analysis on cross-examination. |
| D. Del. | CR Bard Inc. et al v. AngioDynamics Inc., 1-15-cv-00218 (D. Del. June 26, 2018) | Not excluded | Plaintiff’s motion to exclude the testimony of defendant’s experts regarding non-infringing alternatives is denied because the experts are qualified, and mere disagreement goes to the weight of the evidence. |
| D. Del. | Acceleration Bay LLC v. Activision Blizzard, Inc., 1-16-cv-00453 (D. Del. Aug. 28, 2018) | Not excluded | Plaintiff’s motion to exclude the testimony of defendant’s expert regarding noninfringing alternatives as unqualified is denied because a damages expert may testify about noninfringing alternatives, to the extent that her testimony represents evidence she relied upon (from a third party and the inventors) in forming her opinion about damages. |
| D. Del. | Evolved Wireless, LLC v. Apple Inc., 1-15-cv-00542 (D. Del. Mar. 12, 2019) | Not excluded | Plaintiff’s motion to exclude the testimony of defendant’s expert as unqualified is denied. The expert is a managing director of a firm providing financial products and services related to intellectual property and has provided financial and economic consulting services for over thirty years. She has conducted valuation, licensing negotiations, and strategic management studies involving intellectual property and has determined reasonable royalty and lost profits damages for patent infringement and analyzed damages in other types of intellectual property disputes. |
| FOURTH CIRCUIT | |||
| E.D. Va. | VS Technologies v. Twitter, Inc., 2-11-cv-00043 (E.D. Va. Oct. 4, 2011) | Not excluded | Defendant’s motion to strike plaintiff’s damages expert report is denied because plaintiff’s expert, an attorney with experience negotiating patent licenses, has over 40 years in the area of the licensing of patents, trademarks, and technologies, and has been involved in the negotiation of more than 400 licenses. |
| D. Md. | Pulse Medical Instruments, Inc. v. Drug Impairment Detection Services, LLC, 8-07-cv-01388 (D. Md. March 12, 2012) | Not excluded | Plaintiff’s motion to exclude defendant’s damages expert with extensive education and experience related to damages is denied because no separate showing of expertise in negotiating is needed to opine on the Georgia Pacific factors. Defendant’s motion to exclude the testimony of plaintiff’s damages expert is denied because the expert had extensive education and experience in the valuation of ‘patents, licenses, and other forms of tangible property. |
| E.D. Va. | TecSec, Incorporated v. International Business Machines Corporation, et. al., 1-10-cv-00115 (E.D. Va. June 14, 2018) | Not excluded | Defendant’s motion to exclude the testimony of plaintiff’s experts regarding apportionment is denied because the witnesses are well-qualified and the concerns are properly addressed during trial. |
| FIFTH CIRCUIT | |||
| E.D. Tex. | Alexsam, Inc. v. Barnes & Noble, Inc., et. al., 2-13-cv-00003 (E.D. Tex. May 28, 2013) | Not excluded | Plaintiff’s motion to exclude technical testimony from defendant’s damages expert is denied because the expert’s opinions concern non-infringing alternatives, and the damages expert properly relies on defendant’s technical expert without offering technical opinions on infringement or invalidity. |
| E.D. Tex. | Affinity Labs of Texas, LLC v. Ford Motor Company, 1-12-cv-00580 (E.D. Tex. Aug. 22, 2014) | Not excluded | Plaintiff’s motion to strike the report of defendant’s damages expert re the comparability of licenses is denied because the expert will be offering economic testimony, not scientific or engineering based testimony; and because the damages expert relied on defendant’s technical expert. |
| E.D. Tex. | Motio, Inc. v. BSP Software LLC et al, 4-12-cv-00647 (E.D. Tex. Jan. 6, 2016) | Excluded | Defendant’s motion to strike plaintiff’s designation of its CEO as an expert is granted because plaintiff failed to show that its CEO is qualified to speak as an expert towards issues regarding infringement or the calculation of damages. |
| E.D. Tex. | Realtime Data LLC d/b/a IXO v. Oracle America, Inc., 6-16-cv-00088 (E.D. Tex. March 30, 2017) | Excluded | Defendant’s motion to exclude the testimony of plaintiff’s technical expert regarding apportionment as unqualified is granted because although the expert has a Ph.D. in computer science and academic and industry experience in hardware and software design and development, the expert has limited experience with economic apportionment. The technical expert’s opinions may be an input into the damages expert’s opinion about the proper apportionment value, but may not be the final apportionment value itself. |
| E.D. Tex. | S3G Technology LLC v. UniKey Technologies, Inc., 6-16-cv-00400 (E.D. Tex. May 8, 2018) | Excluded | Plaintiff’s motion to exclude the testimony of defendant’s damages expert regarding comparable agreements is granted because the expert’s background and skills are negotiating technology licenses related to smart locks, access control systems, and mobile keys. The expert has not technical expertise in the accused technology, and thus cannot opine on the technological comparability of the patents-in-suit and the patent in the agreement. |
| E.D. Tex. | Intellectual Ventures II LLC v. Sprint Spectrum LP d/b/a Sprint PCS et al, 2-17-cv-00662 (E.D. Tex. Apr. 11, 2019) | Not excluded | Defendant’s motion to exclude the testimony of plaintiff’s expert regarding patent valuations as unqualified is denied. However, the expert served in a similar role in a case between some of the same parties a few months before. |
| E.D. Tex. | Plastronics Socket Partners, Ltd. et al v. Hwang, 2-18-cv-00014 (E.D. Tex. May 20, 2019) | Not excluded | Plaintiff’s motion to strike portions of defendant’s expert report on lost profits as unqualified is denied. The damages expert, having a background in economics, is qualify to conduct the analysis on manufacturing and marketing capacity under Panduit. |
| E.D. Tex. | Traxcell Technologies, LLC v. AT&T, Inc. et al, 2-17-cv-00718 (E.D. Tex. Sept. 18, 2019) | Not excluded | Plaintiff’s motion to exclude the analysis of defendant’s technical expert on apportionment is denied. The expert has a Ph.D. in electrical engineering. Between his education and his experience, the expert is sufficiently qualified to provide opinions on a technical apportionment analysis. |
| E.D. Tex. | Mobility Workx, LLC v. Verizon Communications, Inc. et al, 4-17-cv-00872 (E.D. Tex. Nov. 5, 2019) | Not excluded | Defendant’s motion to exclude the opinions of plaintiff’s damages expert as unqualified is denied. While none of his degrees are in economics, a degree is not required to serve as an expert. The expert has sufficient experience in evaluating technology and patents to license, providing third parties with economic advice, and evaluating assets to serve as the damages expert in this case. |
| SIXTH CIRCUIT | |||
| S.D. Ohio | Info-Hold, Inc. v. Muzak Holdings LLC, et. al., 1-11-cv-00283 (S.D. Ohio Aug. 20, 2013) | Excluded | Defendant’s motion to strike plaintiff’s damages expert’s reports is granted because although the expert has been doing tax and audit work for plaintiff, the expert has no prior experience with the Georgia-Pacific factors or with patent damages calculations at all, and no prior experience with patent licenses. |
| SEVENTH CIRCUIT | |||
| N.D. Ill. | Sloan Valve Company v. Zurn Industries, Inc., et. al., 1-10-cv-00204 (N.D. Ill. Oct. 15, 2013) | Excluded | Defendant’s motion to exclude the testimony of plaintiff’s infringement expert regarding price erosion is granted because although the expert has decades of experience in the relevant industry, the expert does not have any experience in conducting economic analyses and did not perform any economic studies. |
| N.D. Ill. | Robertson Transformer Co. v. General Electric Company, et. al., 1-12-cv-08094 (N.D. Ill. Aug. 19, 2016) | Excluded | Plaintiff’s motion to preclude defendant’s damages expert from testifying as unqualified is granted because the expert’s graduate studies did not include coursework in economics or any of its subfields, nor does the expert hold a degree in economics or accounting; the expert’s expertise in Bayesian statistics is not sufficient. |
| W.D. Wis | DSM IP Assets, BV et al v. Lallemand Specialties, Inc. et al, 3-16-cv-00497 (W.D. Wis. April 25, 2018) | Excluded | Defendant’s motion to exclude the testimony of plaintiff’s expert regarding noninfringing alternatives as unqualified is partially granted because the expert is a chemical engineer and not an economist. |
| EIGHTH CIRCUIT | |||
| E.D. Mo. | Emerson Electric Co. v. Suzhou Cleva Electric Applicance Co., Ltd. et al, 4-13-cv-01043 (E.D. Mo. Dec. 15, 2015) | Not excluded | Plaintiff’s motion to exclude the testimony of defendant’s rebuttal damages expert regarding noninfringing alternatives as unqualified is denied because the damages expert need not be a person of ordinary skilled in the art of the patented technology to opine on the Panduit factors. |
| N.D. Iowa | Meridian Manufacturing Inc. v. C&B Manufacturing Inc., 5-15-cv-04238 (N.D. Iowa Oct. 5, 2018) | Not excluded | Plaintiff’s motion to exclude the testimony of defendant’s damages expert on a reasonable royalty as unqualified is denied. The expert, who is a CPA with over 30 years of providing financial analyses, may testify on how the patentable features informed her damages analysis. The expert is not expressing an expert opinion about these technical features. Instead, she is merely relating the information she used in her ultimate damages analysis. |
| N.D. Iowa | Meridian Manufacturing Inc. v. C&B Manufacturing Inc., 5-15-cv-04238 (N.D. Iowa Oct. 5, 2018) | Excluded | Defendant’s motion to exclude the opinions of plaintiff’s expert regarding acceptable noninfringing alternatives as unqualified is partially granted. The expert is a professional engineer and instructor and has worked as a consulting engineer. He does not have the requisite expertise in market forces or consumer expectations to provide opinions as to commercial success or other commercial aspects of an invention. His opinions as to commercial success and praise of others are inadmissible. |
| NINTH CIRCUIT | |||
| C.D. Cal. | Broadcom Corporation v. Emulex Corporation, 8-09-cv-01058 (C.D. Cal. Aug. 10, 2011) | Excluded | Plaintiff’s motion to preclude defendant’s damages expert from testifying about noninfringing substitutes is granted because the expert is not qualified to testify as to whether the third party’s product was infringing or not infringing. |
| N.D. Cal. | Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (N.D. Cal. Nov. 28, 2011) | Not excluded | Plaintiff’s motion to strike portions of defendant’s damages experts reports on noninfringing alternatives as unqualified is denied because although the experts were economists with no technical expertise, they properly relied on technical experts and other available witnesses and evidence. |
| N.D. Cal. | Plantronics, Inc. v. ALIPH, INC. et al, 3-09-cv-01714 (N.D. Cal. Jan. 10, 2014) | Excluded | Plaintiff’s motion to exclude the testimony of defendant’s damages expert regarding non-infringing substitute as unqualified is granted because the expert is an economist, not a technical expert and thus cannot opine that the third party technology was an acceptable non-infringing substitute. |
| N.D. Cal. | Open Text S.A. v. Box, Inc. et al, 3-13-cv-04910 (N.D. Cal. Jan. 29, 2015) | Not excluded | Plaintiff’s motion to exclude the opinions of defendant’s damages and technical experts regarding noninfringing substitutes as unqualified is rejected because the technical expert properly opined that the alternatives would result in performance that was imperceptible to the end user. |
| N.D. Cal. | Good Technology Corporation et al v. MobileIron, Inc., 5-12-cv-05826 (N.D. Cal. July 5, 2015) | Excluded | Defendant’s motion to exclude the testimony of plaintiff’s technical expert regarding noninfringing substitutes is granted because although the expert is more than qualified technically, experience with the technology does not give an individual expertise in consumer demand related to those non-infringing alternatives. |
| C.D. Cal. | Kaneka Corporation v. SKC Kolon PI, Inc., et. al., 2-11-cv-03397 (C.D. Cal. Nov. 5, 2015) | Not excluded | Defendant’s motion to preclude the testimony of plaintiff’s damages expert regarding Korean markets is denied because the expert will quantify the economic loss allegedly suffered, and is qualified to do so given his 25+ years of experience in the evaluation and quantification of economic damages arising from intellectual property disputes. |
| C.D. Cal. | TCL Communication Technology Holdings, Ltd v. Telefonaktiebolaget LM Ericsson et al, 8-14-cv-00341 (C.D. Cal. Feb. 2, 2017) | Not excluded | Plaintiff’s motion to exclude the testimony of defendant’s damages expert regarding the valuation of certain patents is denied because the expert has more than 20 years experience in intellectual property valuation, is the president of his own valuation firm, is the author of an intellectual property text, has published extensively, and holds a bachelor’s degree in computer science as well as an MBA. Plaintiff’s motion to exclude the testimony of defendant’s rebuttal expert/in-house counsel as unqualified is denied because the expert’s extensive licensing background is a legitimate basis for expertise; the expert is qualified to testify how licensing negotiation are carried out, including motives and strategies. |
| N.D. Cal. | Opticurrent, LLC v. Power Integrations, Inc. et al, 3-17-cv-03597 (N.D. Cal. Dec. 21, 2018) | Excluded | Defendant’s motion to exclude plaintiff’s damages expert opinion on how the patented features helped defendant meet an energy compliance standard as unqualified is granted. The expert is not an expert in the particular energy compliance and would not be able to offer a reliable or helpful opinion on the impact of the patent technology on defendant’s ability to comply with the standard. |
| S.D. Cal. | Whitewater West Industries, Ltd. v. Pacific Surf Designs, Inc. et al, 3-17-cv-01118 (S.D. Cal. May 22, 2019) | Not excluded | Defendant’s motion to preclude plaintiff’s damages expert from providing opinions regarding design-around products as unqualified is denied. Defendant’s argument that expert is ‘unqualified to offer an opinion on whether the proposed design-around for the patent is feasible or would be an acceptable, non-infringing alternative to the accused products’ can be discussed on cross-examination as this addresses the weight of his opinion, not its admissibility. |
| W.D. Wash. | Ironburg Inventions Ltd. v. Valve Corporation, 2-17-cv-01182 (W.D. Wash. Nov. 7, 2019) | Not excluded | Defendant’s motion to exclude the testimony of plaintiff’s damages expert on a reasonable royalty as unqualified is denied. The expert, who holds a Ph.D. in economics, is qualified to testify about a hypothetical license for the patents-in-suit and the reasonable royalties that might be expected in connection with such license. Defendant’s motion to exclude the testimony of plaintiff’s technical expert regarding the basis for plaintiff’s damages expert’s reasonably royalty rate is denied. The technical expert is qualified to express an opinion that the patents-in-suit constitute the prominent components of the intellectual property licensed by a third party. |
| TENTH CIRCUIT | |||
| D. Utah | Phillip M. Adams & Associates, L.L.C. v. Lenovo International, et. al., 1-05-cv-00064 (D. Utah Sept. 20, 2010) | Not excluded | Defendant’s motion to exclude plaintiff’s damages expert is denied because the fact that portions of the expert’s testimony were excluded in two other cases does not mean he is not qualified. |
| ELEVENTH CIRCUIT | |||
| M.D. Fla. | Chico’s FAS, Inc. v. Wink Intimates et al, 2-13-cv-00792 (M.D. Fla. June 3, 2015) | Reserved | The court reserved ruling on plaintiff’s motion to exclude the testimony of defendant’s damages expert as unqualified: the expert has no accounting, finance, or economic degrees, and is not a certified public accountant or certified valuation analyst. If the expert testifies at trial, then plaintiff will be permitted to voir dire the witness. Until then, the Court reserves its ruling on his qualifications. |
| M.D. Fla. | Stoneeagle Services, Inc. v. Pay-Plus Solutions, Inc. et al, 8-13-cv-02240 (M.D. Fla. June 19, 2015) | Not excluded | Defendant’s motion to preclude the testimony of plaintiff’s damages expert regarding technical comparability is denied: the expert has extensive licensing experience and concerns regarding his technical expertise can be addressed on cross-examination. |
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