United States District Court, W.D. Wisconsin
OPINION AND ORDER
William M. Conley District Judge
the court has ruled on the majority of the parties’
motions in limine, there are a number of
Daubert motions pending. The court issues this
opinion and order on the two challenges that appear to
concern an expert’s proffer on liability issues (dkt.
##441, 472), while reserving on the numerous other challenges
that appear to concern solely the admissibility of
experts’ proffers on damage issues.
Plaintiff’s Motion to Exclude Certain Testimony of Dr.
John Nolan (dkt. #441).
seeks to exclude testimony of ST’s expert John
Nolan’s that ABS knew or should have known that Kathy
Mean misappropriated trade secrets. However, ABS states in
its motion in limine (dkt. #480) that it is conceding
liability for misappropriation of trade secrets based on
Kathy Mean’s use of XY’s ejaculate addition
protocols to prepare similar protocols in 2011 for ABS. Since
this motion appears moot, it is DENIED.
Defendants’ Motion to Exclude Testimony of Dr. John
Parks (dkt. #472).
seeks to exclude testimony from ABS’s technical expert,
John Parks, on any contract issues. Dr. Parks is a proffered
technical expert on scientific matters related to sperm, and
he has provided expert reports focused on the protocols and
media for sperm sorting. ST points out, however, that his
expert report also purports to opine on
“contract-related issues” -- namely, whether
information constitutes “Confidential
Information” as defined by Section 16 of the Agreement,
as well as whether certain conduct is a breach of the
Agreement. On these issues, ST argues that Parks is not
qualified to opine, and further that contract interpretation
is never a proper subject for expert testimony.
responds that the motion should be denied because Dr. Parks
never reaches any legal conclusions in his expert reports.
Instead, Dr. Parks reviewed the categories of information
that allegedly constituted confidential information,
concluded that the information was either known in the field
generally or ST employees had already revealed it in
published scientific papers specifically. By ABS’s
lights, Dr. Parks’ assessment as to whether information
is “confidential, non-public, proprietary and/or
generally not known to the public” actually calls
for scientific and technical opinions. In support, ABS
cites multiple decisions that have permitted an expert to
testify about issues related to contract terms or
interpretation, each time because their area of expertise was
relevant to understanding the terms of the contract. See
Tendeka, Inc. v. Glover, No. 13-cv-1764, 2015 WL
2212601, at *24 (S.D. Tex. May 11, 2015) (with respect to
misuse of confidential information, the court permitted a
chemical engineer to testify about whether defendant
independently developed a compound or used confidential
information); Pixart Imaging, Inc. v. Avago Tech. Gen. IP
(Singapore) Pte. Ltd., No. 10-cv-00544, 2011 WL 5417090,
at *6 (N.D. Cal. Oct. 27, 2011) (permitting expert testimony
regarding whether certain products were covered by a
also emphasizes that Dr. Parks’ specific opinions about
the Agreement were not legal opinions. Instead, ABS asserts
that Parks was simply applying the definition of
“Confidential Information” under the Agreement in
testifying: (1) that “quality control data” was
not included in the definition; (2) that actions allegedly
violating Section 16 took place before the effective date of
the Agreement; (3) about Dr. Nolan’s comments; and (4)
about the hypothetical amount of harm ST would suffer as
result of a breach of Section 16.
Parks’ opinions about what information was in the
public sphere and, therefore, not covered by the
definition of “Confidential Information” in
Section 16 of the Agreement both appear to be tied to his
expertise in the field of sperm sorting. Accordingly, the
court will permit him to testify on those issues. However,
ABS may not seek any testimony from Dr. Parks about whether
the timing of certain behavior violated Section 16, and
certainly not whether he believes that ABS’s conduct
ultimately constituted a breach of Section 16. The motion is,
therefore, GRANTED in part and DENIED in part.
Plaintiff ABS Global, Inc.’s motion in limine to
exclude certain testimony of Dr. John Nolan (dkt. #441) is
DENIED as moot.
Defendants Inguran, LLC and XY, LLC’s motion in limine
No. 2 to exclude testimony of Dr. John Parks (dkt. #472) ...