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DSM IP Assets, B.V. v. Lallemand Specialties, Inc.

United States District Court, W.D. Wisconsin

April 25, 2018

DSM IP ASSETS, B.V. & DSM BIO-BASED PRODUCTS & SERVICES, B.V., Plaintiffs and Counter-Defendants
LALLEMAND SPECIALTIES, INC. & MASCOMA LLC, Defendants and Counterclaimants.

          OPINION & ORDER

          WILLIAM M. CONLEY District Judge

         Having already addressed the parties' motions in limine, the court issues the following opinion and order on defendants' Daubert motions.


         I. Lallemand's Motion to Exclude Opinions of Hal Alper, Ph.D. (dkt. #190)

         Lallemand seeks to exclude two general types of opinions offered by Professor Alper: (1) “opinions on the state of mind, intent, and motives of Lallemand”; and (2) “opinions concerning the availability and acceptability of non-infringing alternatives” under Rule 702. (Dkt. #190 at 5.) DSM opposes the motion. In applying Rule 702, a district court is to function as a “gatekeeper, ” determining whether a party's proffered expert testimony is relevant and reliable. Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 589 (1993); see also United States v. Johnsted, 30 F.Supp.3d 814, 816 (W.D. Wis. 2013) (expert testimony must be “not only relevant, but reliable”). Although “liberally admissible under the Federal Rules of Evidence, ” Lyman v. St. Jude Med. S.C., Inc., 580 F.Supp.2d 719, 723 (E.D. Wis. 2008), expert testimony must satisfy the following three-part test:

[1)]the witness must be qualified “as an expert by knowledge, skill, experience, training, or education, ” Fed.R.Evid. 702; [2] the expert's reasoning or methodology underlying the testimony must be scientifically reliable, Daubert, 509 U.S. at 592-93; and [3] the testimony must assist the trier of fact to understand the evidence or to determine a fact in issue. Fed.R.Evid. 702.

Ervin v. Johnson & Johnson, Inc., 492 F.3d 901, 904 (7th Cir. 2007).

         While “[v]igorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence, ” Daubert, 509 U.S. at 596, an expert cannot offer an opinion on a party's intent because the expert can only render such an opinion “by drawing inferences from the evidence” and experts are not “any more qualified than an ordinary juror to draw those inferences.” See Dahlin v. Evangelical Child and Family Agency, No. 01 C 1182, 2002 WL 31834881, at *3 (N.D. Ill.Dec. 18, 2002). Likewise, it is improper for an expert to offer opinions inconsistent with the appropriate legal standard. See Wis. Res. Prot. Council v. Flambeau Mining Co., No. 11-cv-45-bbc, 2012 WL 12996210, at *2 (W.D. Wis. May 17, 2012) (“experts may not offer opinions about the applicable legal standards” since that “is the court's job”).

         Here, Lallemand seeks to exclude some of Alper's opinions because he has “no specialized knowledge or expertise to render these conclusions, ” and they “are beyond the bounds of permissible expert testimony.” (Dkt. #190 at 5; id. at 11 (identifying ¶¶ 131, 135-36 of Alper's initial report and ¶¶ 112, 149, 171, 192, 220, 227, 229, 231 of his substitute report).)[1] Specifically, Lallemand seeks to exclude Alper's conclusion that “Lallemand copied the '998 Technology” (dkt. #146 ¶¶ 171-73, 227, 231; dkt. #45 ¶¶ 133-39) as based solely on Alper's “reading of documents in this case, ” which is something for which he does not have specialized expertise (dkt. #190 at 10.) Lallemand also seeks to exclude opinions about willful infringement to which Alper testified at his deposition, contending they “are improper legal conclusions.” (See Id. at 10-11.)

         As noted, DSM opposes the motion, specifically noting that Alper provided no opinions about Lallemand's intent. As to paragraph 149, DSM explains that Alper's opinion is premised on Professor Winge ordering additional testing -- instead of relying on Lallemand's original Blomberg assay testing -- which “to a scientist” demonstrates that both the “original testing was of poor quality and unreliable” and the original tester lacked an understanding of how to use the Blomberg assay. (Dkt. #214 at 5-6.) Accordingly, DSM contends that Alper's opinion is about how a scientist would interpret the reliability of Lallemand's testing, making it admissible. (Id. at 6.) While not excludable under Daubert, the court is concerned about the relevance of this opinion, both because lack of scientific sophistication is not evidence of willfulness and, if anything, DSM is relying on the original tests to prove infringement, making subsequent criticism to prove willfulness disingenuous at best. Accordingly, the court will RESERVE on the admissibility of this opinion pending a further proffer by plaintiff.[2]

         As to paragraph 192, DSM again defends Alper's opinions about Lallemand's Blomberg testing -- that a double-knockout strain exhibiting the highest GPD activity “indicates a fundamental error in the experimental setup, ” while its delay in providing that result “demonstrates that Lallemand's actions are scientifically unethical and contrary to the norms used by scientists in reaching conclusions based on data and in reporting results, ” so that it did not meet “basic scientific standards.” (Id. at 7-8.) DSM contends Alper is qualified to offer these opinions because he is an editor of peer-reviewed scientific journals and a scientist (id. at 8), but it again fails to explain why this is a relevant standard for proving Lallemand's willfulness or how it purports to be consistent with DSM's proof of infringement. Regardless, the court agrees that these additional opinions are inflammatory and unfairly prejudicial. Accordingly, those opinions in paragraph 192 are STRUCK from his report and Alper shall not render them at trial, including that “Lallemand purposefully concealed a critical piece of information from DSM.” (See dkt. #146 ¶ 192 (emphasis added).)

         In paragraphs 131 and 135-136 of Alper's invalidity report, Lallemand challenges his opinion that it “desire[d] to obtain rights to use the '998 technology” based on Lallemand's “long know[ledge]” of the '998 patent's relevance stemming from the February 2011 agenda (dkt. #45 ¶ 131), which has already been excluded (see dkt. #228 § II.K), as well as opinions that Lallemand copied the '998 patent's technology “with full knowledge” (dkt. #45 at ¶ 136, see also Id. ¶ 135). In response, DSM contends that Alper “relies on Lallemand's knowledge of the '998 patent as well as its admitted relevance to Lallemand's product line [or statements by Lallemand employees] as evidence of a nexus between the claims of the '998 patent and [either] Lallemand's inquiry into licensing the '998 patent [or Lallemand's copying].” (Dkt. #214 at 9.) Experts, DSM argues, analyze documents. (Id.) Again, the court disagrees. Alper's opinions as to Lallemand's desires, purportedly distilled through the review of documents, improperly invades the province of the jury because an expert witness is no more qualified than a lay juror to infer such desires. Accordingly, these opinions are also STRUCK and Alper will not be able to offer them at trial.

         As to paragraphs 220, 227, and 229 of Alper's substitute report, he opines that (1) “with full knowledge, Lallemand incorporated the claimed technology in its TransFerm Yield product”; (2) “Lallemand was aware of DSM's glycerol reduction technology as early as December 2009 and the '998 patent as early as 2013. Despite this knowledge, Lallemand copied the claimed technology”; (4) “Lallemand never attempted to commercialize [acceptable design-around strategies] prior to its mid-2016 launch of the YP3 product despite its knowledge of the '998 patent”; and (5) “Lallemand maintained the claimed acetylating acetaldehyde dehydrogenase activity in its recently developed YP3 product despite its knowledge of the '998 patent and the threat of this pending litigation.” (Dkt. #146 ¶¶ 220, [3] 227, 229 (emphasis added).) Ignoring for the moment that this reads like closing argument, written by counsel, not a scientist, DSM contends that paragraphs 220, 227, and 229 concern whether there were available and acceptable noninfringing alternatives that would factor into the hypothetical negotiation: specifically, Lallemand knew about the patent, its relevance to Lallemand's products, and DSM's infringement claim, yet incorporated the technology into YP3, rather than develop an alternative. Accordingly, Alper purports to find support for his opinion that strain M8827 was neither acceptable nor available. (Dkt. #214 at 11.) Even accepting this explanation, each of these italicized “opinions” would further invade the jury's role as to Lallemand's state of mind. Alper is no more skilled than a lay juror to determine Lallemand's desires and knowledge. Thus, these opinions are also STRUCK and will not be rendered to the jury.

         DSM defends paragraphs 171-73 and 231 of Alper's infringement report as a direct response to Professor Winge's opinion that: “the Accused Products do not require the presence of acetate. In fact, they were engineered without consideration of acetate consumption (at least beyond the level that wild-type yeast cells consume acetate).” (Dkt. #214 at 10 (quoting (dkt. #51 ¶ 91).) The court generally agrees that these opinions are appropriate and directly respond to Winge's opinion. An exception, however, is Alper's opinion that “[w]ithin a week of its publication, Lallemand was . . . aware of ...

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