The Regents of the University of California et al v. Affymetrix, Inc. et al, No. 3:2017cv01394 - Document 413 (S.D. Cal. 2019)
Court Description: ORDER denying Plaintiffs' 365 Motion to Exclude Portions of Expert Testimony Pursuant to Daubert. Court denies Plaintiffs' Daubert Motion without prejudice to a contemporaneous objection at trial. Signed by Judge Marilyn L. Huff on 3/21/2019. (jah)
Download PDF
<![CDATA[
The Regents of the University of California et al v. Affymetrix, Inc. et al Doc. 413 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 12 13 14 THE REGENTS OF THE UNIVERSITY OF CALIFORNIA; BECTON, DICKINSON AND COMPANY; SIRIGEN, INC.; and SIRIGEN II LIMITED, 15 ORDER DENYING WITHOUT PREJUDICE PLAINTIFFS’ DAUBERT MOTION TO EXCLUDE PORTIONS OF EXPERT TESTIMONY Plaintiffs, 16 v. 17 AFFYMETRIX, INC.; and LIFE TECHNOLOGIES CORP., 18 Case No.: 17-cv-01394-H-NLS [Doc. No. 365.] Defendants. 19 20 On February 25, 2019, Plaintiffs the Regents of the University of California, Becton, 21 22 23 24 25 26 27 28 Dickinson and Company, Sirigen, Inc., and Sirigen II Limited filed a Daubert motion to exclude portions of the expert testimony from Defendants’ two technical experts, Dr. Kevin Burgess and Dr. Paul Robinson. (Doc. No. 365.) On March 8, 2019, Defendants Affymetrix, Inc. and Life Technologies Corp. filed a response in opposition to Plaintiffs’ Daubert motion. (Doc. No. 390.) On March 15, 2019, Plaintiffs filed a reply. (Doc. No. 392.) The Court held a hearing on the matter on March 21, 2019. Donald R. Ware, Barbara 1 17-cv-01394-H-NLS Dockets.Justia.com 1 Fiacco, Marco Quina, and Jesse Hindman appeared for Plaintiffs. Douglas E. Lumish and 2 Brent T. Watson appeared for Defendants. For the reasons below, the Court denies 3 Plaintiffs’ Daubert motion without prejudice. 4 Background 5 On February 9, 2018, Plaintiffs filed the operative complaint for patent infringement 6 in this action against Defendants, alleging infringement of U.S. Patent No. 9,085,799, U.S. 7 Patent No. 8,110,673, U.S. Patent No. 8,835,113, U.S. Patent No. 9,547,008, U.S. Patent 8 No. 9,139,869, U.S. Patent No. 8,575,303, and U.S. Patent No. 8,455,613. 1 (Doc. No. 101, 9 FAC.) Specifically, Plaintiffs allege that Defendants’ “Super Bright Dyes” products 10 infringe the patents-in-suit. (Id. ¶¶ 4, 41.) 11 On March 26, 2018, the Court issued a claim construction order, construing the 12 disputed claim terms from the ’799 patent, the ’673 patent, and the ’113 patent. (Doc. No. 13 138.) On May 1, 2018, the Court granted Defendants’ motion for summary judgment of 14 non-infringement of the ’799 patent. (Doc. No. 170.) On May 14, 2018, the Court denied 15 Defendants’ motion for summary judgment of non-infringement of the ’673 patent and the 16 ’113 patent. (Doc. No. 183.) 17 On September 4, 2018, the Court issued a second claim construction order, 18 construing the disputed claim terms from the ’008 patent, the ’869 patent, the ’303 patent, 19 and the ’613 patent. (Doc. No. 274.) On November 13, 2018, the Court issued the current 20 scheduling order for this action. (Doc. No. 331.) By the present motion, Plaintiffs move 21 to exclude portions of the expert testimony from Defendants’ two technical experts, Dr. 22 Kevin Burgess and Dr. Paul Robinson. (Doc. No. 375.) 23 24 Discussion I. Legal Standards for Daubert Motion 25 A district court’s decision to admit expert testimony under Daubert in a patent case 26 is governed by the law of the regional circuit. Summit 6, LLC v. Samsung Elecs. Co., 802 27 28 1 Plaintiffs no longer assert infringement of the ’869 patent in this action. (See Doc. No. 375 at 1.) 2 17-cv-01394-H-NLS 1 F.3d 1283, 1294 (Fed. Cir. 2015). When considering expert testimony offered pursuant to 2 Rule 702, the trial court acts as a “gatekeeper” by “making a preliminary determination of 3 whether the expert’s testimony is reliable.” Elsayed Mukhtar v. Cal. State Univ., Hayward, 4 299 F.3d 1053, 1063 (9th Cir. 2002); see Kumho Tire Co. v. Carmichael, 526 U.S. 137, 5 150 (1999); Daubert, 509 U.S. at 597. Under Rule 702 of the Federal Rules of Evidence, 6 a court may permit opinion testimony from an expert only if “(a) the expert’s scientific, 7 technical, or other specialized knowledge will help the trier of fact to understand the 8 evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or 9 data; (c) the testimony is the product of reliable principles and methods; and (d) the expert 10 has reliably applied the principles and methods to the facts of the case.” 11 The test for reliability of expert testimony under Daubert is flexible and depends on 12 the particular circumstances of the case. Alaska Rent-A-Car, Inc. v. Avis Budget Grp., 13 Inc., 738 F.3d 960, 969 (9th Cir. 2013). “To aid courts in exercising [their] gatekeeping 14 role, the Supreme Court has suggested a non-exclusive and flexible list of factors that a 15 court may consider when determining the reliability of expert testimony, including: (1) 16 whether a theory or technique can be tested; (2) whether it has been subjected to peer 17 review and publication; (3) the known or potential error rate of the theory or technique; 18 and (4) whether the theory or technique enjoys general acceptance within the relevant 19 scientific community.” Messick v. Novartis Pharm. Corp., 747 F.3d 1193, 1197 (9th Cir. 20 2014); Estate of Barabin v. AstenJohnson, Inc., 740 F.3d 457, 463 (9th Cir. 2014) (en 21 banc). The Ninth Circuit has stressed that this list of factors is meant to be helpful, not 22 definitive. Alaska Rent-A-Car, 738 F.3d at 969. 23 “Under Daubert, the district judge is ‘a gatekeeper, not a fact finder.’ When an 24 expert meets the threshold established by Rule 702 as explained in Daubert, the expert may 25 testify and the jury decides how much weight to give that testimony.” Primiano v. Cook, 26 598 F.3d 558, 564-65 (9th Cir. 2010). “‘[T]he test under Daubert is not the correctness of 27 the expert’s conclusions but the soundness of his methodology.’” Primiano, 598 F.3d at 28 564. “Shaky but admissible evidence is to be attacked by cross examination, contrary 3 17-cv-01394-H-NLS 1 evidence, and attention to the burden of proof, not exclusion.” Id. (citing Daubert, 509 2 U.S. at 594, 596); accord Summit 6, 802 F.3d at 1296. “Basically, the judge is supposed 3 to screen the jury from unreliable nonsense opinions, but not exclude opinions merely 4 because they are impeachable.” Alaska Rent-A-Car, 738 F.3d at 969. Further, the Ninth 5 Circuit has explained that “Rule 702 should be applied with a ‘liberal thrust’ favoring 6 admission.” Messick, 747 F.3d at 1196. 7 Whether to admit or exclude expert testimony lies within the trial court’s discretion. 8 Gen. Elec. Co. v. Joiner, 522 U.S. 136, 141-42 (1997); United States v. Verduzco, 373 F.3d 9 1022, 1032 n.6 (9th Cir. 2004) (“We . . . have stressed that the ‘trial court has broad 10 discretion to admit or exclude expert testimony’.”). The Ninth Circuit has explained that 11 “[a] trial court not only has broad latitude in determining whether an expert’s testimony is 12 reliable, but also in deciding how to determine the testimony’s reliability.” Ellis v. Costco 13 Wholesale Corp., 657 F.3d 970, 982 (9th Cir. 2011). 14 II. Analysis 15 In their motion, Plaintiffs provide three separate grounds for excluding portions of 16 the testimony from Defendants’ experts. (Doc. No. 375 at 3.) The Court addresses each 17 of these arguments in turn below. 18 A. 19 Plaintiffs argue that in his expert report, Dr. Burgess relies on prior art references 20 and combinations that Defendants did not select in their October 19, 2018 election of prior 21 art references, and, thus, the Court should strike these additional references from Dr. 22 Burgess’s invalidity opinions. (Doc. No. 375 at 4-13.) In response, Defendants argue that 23 Dr. Burgess properly limited his obviousness analysis to the prior art references that were 24 identified in the October 19, 2018 disclosure. (Doc. No. 390 at 3.) Dr. Burgess’s obviousness combinations. 25 On September 20, 2018, the Court issued an order requiring Plaintiffs to limit their 26 asserted claims of infringement to no more than 16 patent claims in total, and for 27 Defendants to limit their anticipation and obviousness defenses to no more than 20 prior 28 art references, and the Court provided the parties with deadlines for making these 4 17-cv-01394-H-NLS 1 reductions. (Doc. No. 285.) In the order, the Court defined a “prior art reference” as “a 2 single prior art reference that is asserted to anticipate, or a specific combination of 3 individual prior art references asserted to support an obviousness claim.” (Id. at 2.) On 4 October 12, 2018, Plaintiffs made their election of asserted claims, and on October 19, 5 2018, Defendants made their election of prior art references. (Doc. No. 375 at 4; Doc. No. 6 384-7, Ex. G.) 7 On December 7, 2018, Defendants served Plaintiffs with the opening expert report 8 of Dr. Burgess. (Doc. No. 375-1, Ex. 4, Burgess Opening Report.) In his expert report, 9 Dr. Burgess analyzes nine separate anticipatory references/obviousness combinations: (1) 10 Hou and Inganas; (2) Hou, Bazan, and Haugland; (3) Huang; (4) Chen; (5) Chen and 11 Gaylord; (6) Huang and Chen; (7) Huang, Chen, and Gaylord; (8) Huang and Liu; and (9) 12 Huang, Liu, and Gaylord. (Id. at 46-59.) Each of these references/combinations was 13 selected in Defendants’ October 19, 2018 elections.2 (Compare id. at 23-33, 46-59 with 14 Doc. No. 384-7, Ex. C; see Doc. No. 390 at 3.) 15 Plaintiffs note that at times, Dr. Burgess refers to additional pieces of literature, such 16 as Louiseau, Towns and Xue, in his invalidity analysis. (Doc. No. 375 at 7-9 (citing Doc. 17 No. 375-1, Burgess Opening Report ¶¶ 189, 195, 196).) In response, Defendants argue 18 that it was proper for Dr. Burgess to cite these additional materials in his invalidity analysis 19 as background material illustrating the state of the art and general knowledge of a person 20 of ordinary skill. (Doc. No. 390 at 4-8.) The Court agrees. An invalidity expert is 21 permitted to rely on additional unelected references “when they are being used only as 22 ‘background’ material.” Fujifilm Corp. v. Motorola Mobility LLC, No. 12-CV-03587- 23 WHO, 2015 WL 757575, at *30 (N.D. Cal. Feb. 20, 2015); see also Verinata Health, Inc. 24 v. Sequenom, Inc., No. C 12-00865 SI, 2014 WL 4100638, at *5 (N.D. Cal. Aug. 20, 2014); 25 Genentech, Inc. v. Trustees of Univ. of Pennsylvania, No. C 10-2037 LHK PSG, 2012 WL 26 27 28 2 Specifically, these combinations were previously disclosed as Defendants’ elected references Nos. 1, 2, 3, 5, 7, 8, 9, 13, and 14. (See Doc. No. 384-7, Ex. C.) 5 17-cv-01394-H-NLS 1 424985, at *3 (N.D. Cal. Feb. 9, 2012). 2 Moreover, the Court notes that even if the Court considers these additional pieces of 3 literature as additional prior art references and not simply background material, Plaintiffs 4 have failed to explain how they have been prejudiced by the inclusion of these additional 5 references. Plaintiffs do not assert that these are brand new references that were not 6 previously disclosed in Defendants’ invalidity contentions. Plaintiffs were able to depose 7 Dr. Burgess regarding these additional references, and Plaintiffs were able to serve their 8 own rebuttal expert report addressing these references. Further, as Plaintiffs themselves 9 note, the Court’s September 20, 2018 order did not place a limit on the number of individual 10 references that Defendants could include as part of a single obviousness combination. 11 (Doc. No. 375 at 5; Doc. No. 406 at 1.) Thus, even if Dr. Burgess’s report included 12 additional references, Dr. Burgess’s analysis was still limited to no more than 20 specific 13 anticipatory references/obviousness combinations, which complies with the purpose of the 14 Court’s September 20, 2018 order. Indeed, in his report, Dr. Burgess’s relies on only 9 15 specific anticipatory references/obviousness combinations in performing his invalidity 16 analysis, well under the limit of 20 set forth in the September 20, 2018 order. In sum, the 17 Court declines to strike from Dr. Burgess’s report these additional pieces of literature. 18 B. 19 Plaintiffs argue that the Court should exclude portions of Dr. Burgess’s opinions 20 related to Defendants’ alleged copying of BD’s products because Dr. Burgess utilizes an 21 incorrect legal standard in his analysis. (Doc. No. 375 at 13-15.) In response, Defendants 22 argue that Dr. Burgess’s analysis of BD’s copying allegations is proper. (Doc. No. 390 at 23 8-9.) Dr. Burgess’s Opinions Related to Plaintiffs’ Allegations of Copying 24 “[C]opying by others” is “a secondary considerations or objective indicia of non- 25 obviousness.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1052 (Fed. Cir. 2016). 26 The Federal Circuit has explained: “‘Copying may indeed be another form of flattering 27 praise for inventive features,’ and thus evidence of copying tends to show nonobviousness. 28 The fact that a competitor copied technology suggests it would not have been obvious.” 6 17-cv-01394-H-NLS 1 WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1336 (Fed. Cir. 2016) (citations omitted). 2 “[C]opying requires the replication of a specific product. This may be demonstrated either 3 through internal documents, direct evidence such as disassembling a patented prototype, 4 photographing its features, and using the photograph as a blueprint to build a virtually 5 identical replica, or access to, and substantial similarity to, the patented product (as 6 opposed to the patent).” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 7 (Fed. Cir. 2004). 8 Plaintiffs argue that because Dr. Burgess’s analysis in his opening expert report 9 focuses on the asserted patents relative to the prior literature rather than on Defendants’ 10 development of the accused products, these portions of his analysis are legally erroneous. 11 (Doc. No. 375 at 14-15 (citing Doc. No. 375-1, Ex. 4, Burgess Opening Report ¶¶ 246-49; 12 Doc. No. 375-2, Ex. 5 at 143:20-21).) In response, Defendants note that in his rebuttal 13 expert report, Dr. Burgess does indeed examine the development of the products at issue 14 in response to Plaintiffs’ copying allegations. (Doc. No. 390 at 8 (citing Doc. No. 390-4, 15 Ex. D, Burgess Rebuttal Report ¶¶ 62-69, 285-300).) Defendants further argue that Dr. 16 Burgess’s analysis of what was well known in the art is relevant to rebut Plaintiffs’ ability 17 to establish a nexus between the alleged copying and the novel aspects claimed by the 18 patents. (Doc. No. 390 at 9.) 19 The Federal Circuit has explained that “‘a nexus between the copying and the novel 20 aspects of the claimed invention must exist for evidence of copying to be given significant 21 weight in an obviousness analysis.’” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 22 683 F.3d 1356, 1364 (Fed. Cir. 2012). Dr. Burgess’s analysis of what was known in the 23 art to a person of ordinary skill is relevant to the determination of whether there was a 24 nexus between the alleged copying and the novel aspects of the claimed invention. As 25 such, the Court declines to exclude Dr. Burgess’s opinions related to Plaintiffs’ allegations 26 of copying. 27 /// 28 /// 7 17-cv-01394-H-NLS 1 C. 2 Dr. Burgess’s and Dr. Robinson’s Opinions Related to Defendants’ Staining Buffers 3 Plaintiffs argue that the Court should exclude Dr. Burgess’s and Dr. Robinson’s 4 opinions comparing Defendants’ first and second staining buffers on the grounds that their 5 opinions are unreliable because they lack sufficient foundation. (Doc. No. 375 at 15-19.) 6 In response, Defendants argue that Dr. Burgess’s and Dr. Robinson’s opinions regarding 7 the staining buffers have sufficient foundation. (Doc. No. 390 at 9-14.) 8 In their expert reports, Dr. Burgess and Dr. Robinson provide certain non- 9 infringement opinions that are based on experimental data from Affymetrix comparing 10 Defendants’ old and new staining buffers. (Doc. No. 390-4, Burgess Rebuttal Report ¶¶ 11 216-23; Doc. No. 390-5, Robinson Rebuttal Report ¶¶ 106-08.) In forming these opinions, 12 Dr. Burgess and Dr. Robinson interviewed Dr. Castle Funatake, who supervised the 13 experiments that generated the data. (Doc. No. 390-4, Burgess Rebuttal Report ¶¶ 217; 14 Doc. No. 390-5, Robinson Rebuttal Report ¶¶ 107.) 15 Plaintiffs argue that Dr. Burgess’s and Dr. Robinson’s opinions relying on the 16 Funatake data should be excluded because the two experts did not consider or have access 17 to certain product design and manufacturing information that Plaintiffs argue is critical to 18 performing a proper comparison analysis. 19 Defendants argue that Plaintiffs’ criticism of Dr. Burgess’s and Dr. Robinson’s reliance on 20 the Funatake data goes to the weight of the expert testimony, not its admissibility. (Doc. 21 No. 390 at 13.) The Court agrees. As such, the Court declines to exclude Dr. Burgess’s 22 and Dr. Robinson’s opinions comparing Defendants’ first and second staining buffers.3 23 See Alaska Rent-A-Car, 738 F.3d at 970 (affirming the denial of a Daubert motion where 24 the movant’s challenges went to “the weight of the testimony and its credibility, not its (Doc. No. 375 at 17-19.) In response, 25 26 3 27 28 In their motion, Plaintiffs also criticize the timing of Defendants’ production of the Funatake data. (Doc. No. 375 at 15-17.) The Court notes that Plaintiffs never raised any issue with Defendants’ production of the Funatake data with the Court through the Court’s discovery dispute process, (Doc. No. 331 at 3), prior to the close of discovery. 8 17-cv-01394-H-NLS 1 admissibility”); Primiano, 598 F.3d at 564 (“Shaky but admissible evidence is to be 2 attacked by cross examination, contrary evidence, and attention to the burden of proof, not 3 exclusion.” (citing Daubert, 509 U.S. at 594, 596)). 4 Conclusion 5 6 7 8 9 10 For the reasons above, the Court denies Plaintiffs’ Daubert motion without prejudice to a contemporaneous objection at trial. IT IS SO ORDERED. DATED: March 21, 2019 MARILYN L. HUFF, District Judge UNITED STATES DISTRICT COURT 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9 17-cv-01394-H-NLS
]]>
Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You
should read the full case before relying on it for legal research purposes.
This site is protected by reCAPTCHA and the Google
Privacy Policy and
Terms of Service apply.
