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ABS Global, Inc. v. Inguran, LLC

United States District Court, W.D. Wisconsin

August 14, 2019

ABS GLOBAL, INC., Plaintiff/Counterclaim Defendant,
INGURAN, LLC d/b/a SEXING TECHNOLOGIES, Defendant/Counterclaim Plaintiff, and XY, LLC, Intervenor-Defendant/Counterclaim Plaintiff,
GENUS PLC, Counterclaim Defendant. INGURAN, LLC, CYTONOME/ST, LLC, and XY, LLC, Plaintiffs/Counter Defendants,
ABS GLOBAL, INC., GENUS PLC and PREMIUM GENETICKS UK LTD., Defendants/Counter Claimants.



         These consolidated cases are set for a jury trial commencing September 3, 2019. In advance of the final pretrial conference (“FPTC”) scheduled August 15, 2019, the court issues the following opinion on the parties' respective motions in limine and related motions. For purposes of this opinion, the court will refer to ABS Global, Inc., Genus PLC and Premium Geneticks (UK) Ltd. collectively as “ABS” and to Inguran, LLC, Cytonome/ST, LLC and XY, LLC collectively as “ST.”


         I. ABS's Motions

         A. Motion for Leave to Serve Supplemental Expert Report of Dino Di Carlo, Ph.D. (dkt. #286)[1]

         ABS seeks leave to supplement its technical expert Dino Di Carlo, Ph.D.'s report in three respects: (1) extend his invalidity opinion offered with respect to the Weigl prior art reference under a heading for the '309 patent to the '476 patent; (2) include in his written report an opinion that the ramp at Detail C of the GSS chip focuses from the top and bottom, as explained in his deposition testimony; and (3) add a non-infringement theory concerning ABS's GigaSort chip. (Dkt. #286.) Not surprisingly, ST opposes all three of these proposed supplements.[2]

         As ABS acknowledges in its opening brief, a motion to supplement an expert report is governed by Federal Rule of Civil Procedure 16(b)(4), which requires “good cause” to amend a scheduling order. In determining whether good cause exists, the court considers: “(1) whether the moving party acted diligently; (2) whether the amendments or supplements appear to be the legitimate product to newly-produced discovery disclosures; and (3) whether the opposing party is prejudiced by consideration of new or amended” expert opinions. Split Pivot, Inc. v. Trek Bicycle Corp., No. 12-CV-639-WMC, 2013 WL 12234526, at *3 (W.D. Wis. May 2, 2013).

         As for the first two areas of supplementation, the court agrees with ABS that Di Carlo's basic opinions had been previously disclosed. As such, while the supplementation is prudent to ensure that both ST and the court are not caught off guard during trial, neither supplement clearly constitutes a new opinion requiring formal supplementation. Specifically, with respect to the first area of supplementation concerning Weigl, Di Carlo's original invalidity report contained the following paragraphs:

1590. Alternatively, Weigl discloses that focusing is provided in at least a first direction at junction 41 and in at least a second direction different from the first direction at region 26b.
1591. Specifically, as discussed above, the sheath fluid entering through inlet junction (41) provides focusing in at least a first direction. At junction 41, sheath fluid is focused around the bottom of the particles, "concentrically surround[ing]" the center fluid or sample with sheath fluid. Weigl at 12:6-8. This focuses the sheath fluid around the particles in at least a first direction (along the bottom of the particles and focuses the particles away from the bottom of the flow channel). The degree of focusing that occurs is greater when the depth of the channel does not increase.

(Di Carlo Invalidity Rept. (dkt. #129) ¶¶ 1590-91.) While ABS points out that this discussion was under a heading for the '309 patent, the same discussion of Weigl appears equally relevant to the '476 patent, which also discloses two focusing regions or steps. Moreover, although ABS's principal argument with respect to the invalidity of the '476 patent as anticipated by Weigl rested on a claim construction, which the court rejected, Di Carlo disclosed an “alternative” theory involving junction 41 as the first focusing area and region 26(b) as the second focusing area.

         In opposition to this supplemental opinion, ST would have the court ignore Di Carlo's alternative opinion, and instead directs the court to Di Carlo's opinion of Weigl based on region 21(b) being the primary focusing region. (ST's Opp'n (dkt. # 292) 6.) Of course, this simply ignores that Di Carlo's alternative theory had placed ST on notice that, should the court rejected ABS's claim construction of “primary focusing area, ” then this alternative would still be a basis to find that Weigl anticipated the '476 patent. Therefore, this proposed supplementation is nothing more than a simple clarification, which should come as no surprise to ST and will be allowed.

         With respect to the second area of supplementation, Di Carlo did not disclose in his infringement reports that the ramp in the GSS chip focuses from the top and bottom. ABS first attempts to argue that ST's expert Vacca made such a disclosure, but the court previously rejected that same argument in its opinion on the parties' motions for claim construction and summary judgment. (4/29/19 Op. & Order (dkt. #280) 39.) As for Di Carlo, he previously disclosed an opinion that the ramp in the GSS chip focuses from the top and bottom in his deposition testimony. (Di Carlo 12/20/18 Dep. (dkt. #239) 247 (explaining that the ramp “would focus from the top and bottom of the channel, ” because the ramp “is squeezing the sample” and thus “focusing from the top and the bottom”). When pressed by ST's counsel that this opinion was different from what was disclosed in his report, Di Carlo responded, “In my . . . report I describe the ramp as focusing away from the bottom wall. My opinion on that has changed.” (Di Carlo Dep. (dkt. #239) 254.

         Di Carlo then further explained that his initial noninfringement opinion principally concerned the “primary focusing region” as the “first” focusing region claim construction now rejected by this court. Understandably, given competing claim construction theories and the No. of patent claims at issue in this case, Di Carlo did not flush out in his written report this opinion that the ramp in Detail D also focuses from the top. Nonetheless, ST was on notice of this opinion by the time of his deposition in December 2018, and, therefore, has no claim of prejudice.[3]

         ST fairly points out that Di Carlo failed to develop this opinion about Detail D's ramp focusing from the top and bottom into a theory of noninfringement of the '476 patent based on the “direction” limitation. When asked during his deposition how this new opinion affected his noninfringement opinions, Di Carlo responded, “I don't know how it affects my opinions. It may or may not, ” and “I haven't thought about it completely, but it may not be relevant, it may be relevant. Depends on, you know, other details. I'm not sure.” (Di Carlo 12/20/18 Dep. (dkt. #239) 258-59.) Based on this exchange, while Di Carlo will be permitted to offer his opinion that the ramp focuses from the top and bottom, he will not be permitted to rely on it in arriving at any ultimate opinion as to noninfringement of the ‘476 patent. Instead, ABS's counsel will have to connect those dots as part of closing argument.[4]

         The third area of proposed supplementation of Di Carlo's expert opinions requires a different set of considerations. ABS seeks to add an opinion that ST's GigaSort chip does not practice the Cytonome patents. ABS acknowledges that this is a wholly new opinion, not one disclosed either in Di Carlo's prior report or deposition testimony. Nonetheless, ABS contends that the supplementation should be allowed as a response to ST's May 20, 2019, “supplemental response to a contention interrogatory disclosing that the ‘current design of the GigaSort microfluidic kits' does practice at least some of the asserted claims.” (ABS's Mot. (dkt. #286) 9 (quoting Horowitz Decl., Ex. B (dkt. #287-2) 19).)[5]

         Specifically, in support of its new, supplemental contention in late May, ST points to two documents that show a slightly different chip design. (Horowitz Decl., Ex. B (dkt. #287-2) 20 (referring to “previously-produced documents Bates-numbered CYTST 003366 and CYTST 003391 at 94”).) ABS points out that ST's position is in conflict with the position that it maintained during the claim construction hearing -- that if the court adopted ABS's “direction” claim construction, then it would exclude ST's commercial embodiment, the GigaSort chip -- although that brief discussion during the hearing did not clearly concern the new or current design. (2/8/19 Hr'g Transcript (dkt. #245) 70-71.)

         In response, ST argues that it had already disclosed the same contention regarding the GigaSort chip (or at least the chip disclosed in these two documents) in a 30(b)(6) deposition of Cytonome's Chief Technology Officer, Dr. Johnathan Sharpe, dating back to October 11, 2018. (ST's Opp'n (dkt. #292) 12 (citing Sharpe 30(b)(6) Dep. (dkt. #256).) During that deposition, in response to questions from ABS's counsel and in reference to CYTST 003366, Sharpe testified that the design was the current version of the GigaSort chip, and while expressing reluctance to “go into specifics, ” he further described how this design reads onto the Cytonome patents. (Sharpe 30(b)(6) Dep. (dkt. #256) 64-67.) ST further points out that this deposition took place two months before Di Carlo's December 11, 2018, rebuttal report on damages, meaning he had ample time to address whether the current design of the GigaSort designs were covered by the Cytonome patents in that report.

         Here, the court agrees with ST. ABS was on notice of ST's theory that the current version of the GigaSort chip practiced the Cytonome patents, consistent with the court's claim construction of the “direction” term. Of course, ABS is free to challenge in the damages phase whether the new design actually meets the requirement, but ABS has failed to demonstrate good cause for Di Carlo's very late supplementation, and therefore the court will deny ABS leave to amend his report to add the third area of supplementation. For these reasons, ABS's motion for leave to serve supplemental expert report is GRANTED IN PART AND DENIED IN PART.

         B. Motion to Clarify the Court's Claim Construction Order (dkt. #320)

         In this motion, ABS seeks clarification of the court's claim construction decision, rejecting a construction of “primary focusing region” to mean “the first focusing region, ” and adopting ST's construction that “primary focusing region” simply means “a first focusing region” relative to a “secondary focusing region.” (4/29/19 Op. & Order (dkt. #280) 33-35.) Specifically, ABS seeks clarification that this decision “does not foreclose the argument that ST has not met its burden to prove infringement of the remaining claims of the '476 patent on the ground that an admittedly ‘primary' region does not ‘extend downstream of the sample injection site,' as those claims require.” (ABS's Mot. (dkt. #320) 2.)[6]

         In response, ST argues that ABS is effectively seeking a “mulligan” on claim construction, given that the court already considered and rejected ABS's proposed claim construction of “primary focusing region.” While the court considered -- and rejected --ABS's argument that “extending downstream of the sample injection site” supported its construction of “primary focusing region” to be “the first focusing region, ” the court neither construed the phrase “extending downstream of the sample injection site, ” nor otherwise relied on that phrase to construe “primary focusing region.” Instead, in construing the latter term, the court simply rejected an argument that “primary” was limited to “the first” as opposed to a first relative to a second.

         Here, neither party asked the court to construe “extending downstream of the sample injection site, ” presumably based on the belief that such a construction was not necessary and the jury could simply apply the plain meaning. Moreover, the court agrees. Accordingly, ABS is free to argue that this limitation is not satisfied because ST has failed to identify a first focusing region “extending downstream of the sample injection site, ” just as ST may argue the opposite. Nothing about this opinion, however, endorses ABS's apparent argument that, to satisfy this limitation, the focusing area must be “adjacent to” the sample injection site.[7] As such, this motion is GRANTED.

         C. Motion to Try Willfulness Separately (dkt. #324)

         Next, ABS requests an order for a separate, third phase of trial on willfulness after a determination of compensatory damages. The decision to try any issue separately lies within the general discretion of the court. Fed.R.Civ.P. 42(b). In three recent patent cases, this court opted to conduct a third trial phase to address willfulness. DSM v IP Assets, B.V. v. Lallemand Specialties, No. 16-cv-497 (W.D. Wis. May 20, 2018) (dkt. #337 at 72-73); Wis. Alumni Research Found. v. Apple, Inc., 135 F.Supp.3d 865, 882-83 (W.D. Wis. 2015); Ameritox, Ltd. v. Millennium Health, LLC, 101 F.Supp.3d 800, 808 (W.D. Wis. 2015). In each of these cases, the court determined that trifurcation was prudent because of concerns about prejudice to the defendant or confusion on the part of the jury in managing evidence concerning the many Georgia Pacific factors with unrelated evidence of willfulness.[8]

         Here, ABS contends willfulness should be taken up separately because ST has indicated an intent to rely in part on events and evidence from the prior case, ABS I, No. 14-cv-503. Specifically, ST disclosed in discovery its basis for asserting ABS's infringement was willful included: (1) “as part of the prior litigation, ST and XY provided ABS and Genus with a then-complete list of patents owned or licensed to ST/XY, including five of the seven patents asserted here;” (2) “in the first litigation between ST and ABS, ABS unsuccessfully attempted to obtain a remedy form the Court that would have included a license to all of the ST, XY, and Cytonome patents that relate to sperm sorting;” and (3) “ABS has monitored the issuance of sexed semen patents as part of its research and development activities, ” which relies on deposition testimony from ABS I. (ABS's Br. (dkt. #325) 3 (quoting Horowitz Decl., Ex. 2 (dkt. #327-2) 20-21.) ABS also states that in defending against willful infringement, it intends to introduce evidence unrelated to any evidence presented for an award of a reasonable royalty.

         In response, ST argues that trifurcation would be inefficient and prejudicial to it, primarily relying on its needs to recall three witnesses for that phase specifically: ST's expert Dr. Giacomo Vacca; ST's CEO Juan Moreno; and ABS's Chief Scientific Officer Dr Jonathan Lightner. While the court certainly recognizes certain potential inefficiencies with this approach, and notwithstanding the apparent experience of other courts who may choose not to bifurcate or trifurcate, the court has seen little by way of inefficiency, since only additional evidence will be allowed into the third phase of trial. Moreover, for the same reasons it has opted to trifurcate in the past, the court finds that trying willfulness as a separate phase after the damages phase is the best approach to prevent prejudice of otherwise irrelevant evidence seeping into the jury's consideration of compensatory damages here. While the court will, therefore, GRANT this motion, it will be open to suggestions by either side at the FTPC as to how best to accommodate witnesses (e.g., by allowing them to be recalled by live video testimony) or otherwise streamline the fair and efficient presentation of evidence at each phase of trial.

         D. Motion to Exclude Inadmissible Opinions of ST's Damages Expert James E. Malackowski (dkt. #329)

         ABS raises four challenges to ST's damages expert James Malackowski's proposed testimony, arguing that flaws in his analysis render his opinions unreliable, and, therefore, inadmissible. The admissibility of expert testimony in federal courts is governed principally by Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). Rule 702 provides that:

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:
(a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and methods; and
(d) the expert has reliably applied the principles and methods to the facts of the case.

         A district court functions as the “gatekeeper” to ensure that expert testimony meets the requirements of Rule 702. More generally, the court must determine whether a party's proffered expert testimony is relevant and reliable. Daubert, 509 U.S. at 589; 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 expert testimony is “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), it 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). Finally, as the Supreme Court reminded courts in Daubert itself, “[v]igorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are [still] the traditional and appropriate means of attacking shaky but admissible evidence.” 509 U.S. at 596.

         1. Challenge to Per-Unit Revenue Figure

         ABS argues that Malackowski bases his reasonable royalty calculation on revenue from straws of sexed semen, rather than what it argues is the smallest, saleable patent practicing unit, resulting in an unreliable calculation of damages. As both parties recognize, reasonable royalty damages “must be awarded ‘for the use made of the invention by the infringer.'” LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 66-67 (Fed. Cir. 2012) (quoting 35 U.S.C. § 284). As such, “[w]here small elements of multi-component products are accused of infringement, calculating a royalty on the entire product carries a considerable risk that the patentee will be improperly compensated for non-infringing components of that product.” Id. Because of this concern, royalties generally must be based on the “smallest salable patent-practicing unit.” Id. (citation omitted).[9]

         As an overview, Malackowski used three methods or “royalty indicators, ” as ST characterizes them, to support his per-unit royalty number. Under the first method, Malackowski: (1) determined the average per-unit revenue per straw; (2) subtracted the costs, to determine the per-unit profit margin; (3) further deducted the profit margin that ABS realized on its sales of conventional semen in an attempt to isolate the profit attributable to the sex-sorting feature of the SEXCEL product; (4) multiplied that number by 50% to account for the value attributable to the Cytonome patents; and (5) assigned 60% of that amount to ST based on an assumption that the parties would have split the profits 60/40. (ST's Opp'n (dkt. #388) 5.)

         ABS argues that Malackowski's reliance on the SEXCEL product as the foundation for calculating its royalty renders this method fatally flawed, since ABS uses the accused GSS technology to: (1) provide sperm sex-sorting services for others; and (2) to make SEXCEL sexed semen for sale to ABS customers. ABS further asserts that in selling SEXCEL, therefore, ABS is selling more than just semen-sorting services and that additional value is reflected in the prices, resulting in a greater gross profit for ABS. (ABS's Mot. (dkt. #331) 11.) Because Malackowski relied on SEXCEL sales alone to determine the basis for determining the royalty, therefore, ABS contends his is a flawed, unreliable starting point.

         In response, ST explains that Malackowski used the “total number of sexed semen straws that ABS produces with the infringing GSS machines and then sells (whether in the form of the Sexcel straws that it produces from its own bulls, or the straws that it processes under its third-party sorting contracts).” (ST's Opp'n (dkt. #388) 8.) ST further explains that Malackowski opted to include the SEXCEL straws in his analysis because ABS's sorting services is a relatively new and negligible part of its business, resulting in more limited sales and profit data. Based on this explanation, the court will allow Malackowski to begin with SEXCEL straws as the starting point in rendering his analysis, since straws appear to be the smallest saleable unit (or at least ABS fails to suggest a smaller one). Instead, ABS's sophistry aside, a determination of the reliability of Malackowski's method actually turns more on his purported efforts to account for the non-invention components of the GSS technology.[10]

         In particular, using SEXCEL straws, Malackowski purports to account for the non-invention components of that product (e.g., the genetics of ABS's bulls, ABS's brand, its manufacturing know-how, its workforce and the business risks taken) by deducting the gross profits ABS generates from its conventional semen products. ABS argues that this analysis is incomplete because he failed to account for the fact that ABS uses “higher quality semen in its SEXCEL product, compared to that used in its conventional semen products.” (ABS's Mot. (dkt. #331) 12.) ST responds by arguing that “any difference between the available genetics in ABS's Sexcel and conventional semen products is offset by the significant extent to which sales of the former help fuel sales of the latter.” (ST's Opp'n (dkt. #388) 13 (citing Malackowski Rept. (dkt. #211) 89 n.569).) While Malackowski's explanation for failing to account for the different quality of sperm used in these two products strikes the court as a stretch, the court is skeptical that this reasoning alone renders it so unreliable as to warrant excluding it altogether.

         Of course, ABS remains free to challenge Malackowski's assumptions that by relying on a per-unit profit margin he has sufficiently isolated the sex-sorting element of the SEXCEL product despite exceeding by $5 per unit that of ABS's sex-sorting semen product itself.

         Regardless, in light of continuing questions about the method by which Malackowski purports to have isolated the value of the infringing GSS technology in the SEXCEL product (particularly the seeming arbitrariness of a 50% allocation of the value of the Cytonome patents, while assigning a 50% reduction for other technology contributing to advances in sex sorting or the value ABS's other contributions to semen input, manufacturing process and marketing), the court will RESERVE on this portion of the motion until hearing further argument and clarification at the FPTC. Were the court to permit such a substantial per unit royalty to be uttered to the jury, the court would also need to consider what the implications are of such a royalty being sought when seemingly equally, if not substantially more, impressive improvements in same sex sorting resulted in much smaller royalties in ABS I.

         2. Challenge to Cost Calculation

         Next, ABS challenges Malackowski's reliance on a 2013 ABS estimate of variable costs for two reasons. First, ABS contends that Malackowski's analysis is unreliable because he failed to account for any fixed costs, directing the court to its opinion in ABS I in which it criticized ABS's expert on antitrust damages for his failure to exclude fixed costs from his calculation. (ABS's Mot. (dkt. #331) 14 (citing 8/9/16 Opinion & Order ('503 dkt. #666) 21-23).)[11] In response, ABS argues that the expert in ABS I was calculating antitrust damages, whereas Malackowski is calculating patent damages using Georgia-Pacific factors. This explanation is only partially availing. Specifically, ST fails to explain why the differences in damages should excuse Malackowski from including fixed costs in his calculation, notwithstanding evidence that ABS's focus was on variable cost saving. However, this is a dispute that the jury will need to resolve, as ABS fails to cite any authority excluding a royalty expert from concluding that variable cost savings would drive one side's bargaining position[12]

         Second, ABS challenges Malackowski's reliance on its 2013 variable cost projection since we now know that projection was significantly less than the actual amount of costs actually incurred; in other words, “[w]hy use a fictitious profit figure that ABS never achieved, when the actual profit figures were known and in hand, based on actual revenue and actual costs?” (ABS's Mot. (dkt. #331) 15.)[13] In response, ST argues that “Malackowski's use to the 2013 projection was absolutely proper since [only] it would have been available at the time of the hypothetical negotiation.” (ST's Resp. (dkt. #388) 15.) The court agrees with ST that Malackowski's reliance on a 2013 projection is permissible. See Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1385 (Fed. Cir. 2001) (“In this case, the 1996 business plan and its projections for future sales were prepared by Infinite two months before infringement began. Thus, rather than being outdated for purposes of the hypothetical negotiation, those projections would have been available to Infinite at the time of the hypothetical negotiation. The fact that Infinite did not subsequently meet those projections is irrelevant to [its] state of mind at the time of the hypothetical negotiation.”). Of course, ABS remains free to challenge Malackowski regarding any failure to account for actual cost figures in cross-examination, especially given his reliance on actual revenue data in calculating the reasonable royalty under method 1. Moreover, the relevance of actual cost experience should be the subject of an instruction to the jury. Accordingly, this portion of the motion is DENIED.

         3. Challenge to Consideration of ST's Lost Profits

          Finally, ABS challenges Malackowski's consideration of ST's lost profits as a “royalty indicator.” Under this method, “Malackowski considered the per-unit profit that ST previously enjoyed under the sorting agreements with ABS, which profit would have been ‘put at risk by the hypothetical license.'” (ST's Opp'n (dkt. #388) 6 (emphasis added).) ABS contends that consideration of ST's profit is inappropriate because: (1) this is not a lost profits case; and (2) “Malackowski makes no adjustment whatsoever to account for the level of revenue, profits, and market power ST would have achieved absent its unlawful practices.” (ABS's Mot. (dkt. #331) 18.)

         As for the first criticism, ST is not seeking lost profit damages; instead, Malackowski is simply considering ST's lost profits associated with ABS's business competition as a consideration for ST in any hypothetical negotiation. The Federal Circuit has approved of damages expert's considering this risk in arriving at a reasonable royalty opinion. See Asetek Danmark A/S v. CMI USA Inc., 852 F.3d 1352, 1362 (Fed. Cir. 2017) (“To the extent that Dr. Mody's analysis referred to Asetek's per-unit profit on its cooling units, CMI's legal objection lacks merit. As we have recognized, a patent owner participating in a hypothetical negotiation would consider the profits on sales it might lose as a result of granting a license.”).

         As for the second criticism, ST argues that ABS never alleged, and certainly did not prove, “supracompetitive pricing” in ABS I. (ST's Opp'n (dkt. #388) 21.) As such, ABS argues ST has no basis to argue that its pricing and, in turn, its profits were inflated because of the antitrust violation found in ABS I. This criticism is an odd, confusing attempt to meld antitrust pricing concepts and royalty considerations that has no reason to even be introduced in this patent damage trial by either side. Absent advanced leave of court, neither side is to introduce an earlier finding of monopolization, whether by the jury or the court in ABS I. Regardless, in no injury for any monopolistic behavior, the ABS I jury essentially found no basis to calculate any pricing benefit. It would hardly be fair for ST to now discount a royalty here on ill-gotten profits it was never required to disgorge.

         As part of ABS's challenge to Malackowski's consideration of ST's profit data, ABS also challenges Malackowski's assumption that ABS and ST would have split its profit from the patented elements of its GSS technology 60/40, with 60% going to ST and 40% going to ABS, on the basis that the parties had no profit-sharing agreement and other half-developed arguments, but this ignores Malackowski's purported reliance on the parties' historic bargaining positions. As such, ABS's challenges fail to demonstrate that Malackowski's opinions are unreliable as a matter of law; ABS should simply explore his reasons for relying on the 2012 agreement through cross-examination and argue that such an allocation on the facts before the parties at the time of the hypothetical negotiation is unreasonable.

         Accordingly, this portion of ABS's motions is DENIED.

         4. Limitations to Testimony

         Finally, ABS argues that Malackowski's opinions on patents that are no longer at issue, either because the court has granted summary judgment in ABS's favor on invalidity or noninfringement grounds, or ST has waived certain claims, should not be presented to the jury. ST agrees. As such, this portion of the motion is GRANTED AS UNOPPOSED. Of course, nothing about this decision precludes Malackowski from presenting analysis that was originally relevant to both the XY patents and the Cytonome patents, recognizing that the jury may only consider it with respect to the two Cytonome patents still at issue in this trial.

         E. Motion to Exclude Inadmissible Opinions of ST's Technical Expert Giacomo Vacca, Ph.D. (dkt. #334)

         ABS also brings a Daubert motion as to ST's technical expert Giacomo Vacca, Ph.D. ABS raises three challenges to his planned testimony, which the court addresses in turn below.

         1. Challenge to Commercial Success Opinion

         In partial support of a jury finding that the Cytonome patents are nonobvious, Vacca opines that ABS's SEXCEL product is commercially successful. See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966) (listing “commercial success” as one of the secondary considerations in determining obviousness). ABS argues that Vacca, a physicist, is not qualified to render an opinion that relates to the market for bovine sexed semen products nor to the commercial success of ABS's products. In response, ST argues that Vacca's opinion “relates to his expertise in microfluidics.” (ST's Opp'n (dkt. #381) 5.) However, ST stops short of actually explaining how Vacca's opinion about the commercial success of ABS's product draws upon that expertise. To the contrary, as ABS describes in its brief, courts routinely exclude testimony by technical experts on the commercial success of the alleged infringing product on the basis that the expert is not qualified to opine on economic areas. (ABS's Mot. (dkt. #336) 9 (citing cases).) Having failed to establish Vacca's qualifications to opine on the bovine sexed semen product market generally or ABS's success in that market specifically, the court agrees that Vacca is not qualified to opine on the commercial success of ABS's product.

         That said, Vacca's opinion that ABS's product is commercially successfully appears to rest mainly on ABS's own documents describing the commercial success of its product. (ABS's Mot. (dkt. #336) 2 (citing Vacca Rept. (dkt. #131) ¶ 1206)); ST's Opp'n (dkt. #381) (citing Vacca Rept. (dkt. #131) ¶¶ 1206-07).) ST remains free to admit this evidence in support of a finding of the commercial success of ABS's product, and so, too, may Vacca explain the significance of such evidence to his opinion assuming accepted by the jury at face value, understanding that on cross-examination he may not claim any expertise as to whether the jury should do so.

         In addition to challenging Vacca's qualifications to render an opinion on the market and the commercial success of ABS's product, ABS also challenges Vacca's opinion on the basis that he fails to “establish a nexus between demand and the merits of the alleged invention claimed in the Cytonome patents.” (ABS's Mot. (dkt. #336) 8.) As the Federal Circuit has explained, “[a] nexus must be established between the merits of the claimed invention and the evidence of commercial success before that issue becomes relevant to the issue of obviousness.” Vandenberg v. Dairy Equip. Co., a Div. of DEC Int'l, 740 F.2d 1560, 1567 (Fed. Cir. 1984). In other words, the commercial success of the infringer's product must be linked to the patented invention, rather than other, unrelated aspects of the product. Moreover, it is the patentee's “burden of production to demonstrate a nexus between the claimed design and the secondary considerations.” MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1336 (Fed. Cir. 2014).[14]

         Here, Vacca offer some analysis, albeit perhaps limited, tying ABS's description of the success of its product to the patented invention:

Based on the documents I have reviewed, this demand appears to be tied to the benefits of the microfluidic chip. For example, an ABS document titled “GSS June 2015 update” (ABS201700060921 at 60922) indicates that the “Benefits of Genus' technology” are: “Higher percentage of sperm [being] oriented properly for sex determination, ” “Sperm exposed to considerably lower pressure during processing, ” “Sperm are not passed through a nozzle, thus eliminating nozzle generated shear forces, ” and “Sperm are not exposed to the extremely high electrical charges generated by an electrostatic sorting system.” Similarly, ABS has proclaimed that “[t]he IntelliGen Technologies process to develop sexed bovine genetics does not subject cells to the high pressures, electric currents and shear forces used in other sexed semen processes” and “[t]he result is a product that helps customers maximize their profitability and reach their end goals in a fast and efficient manner.” See ABS201700023813-817 (an ABS press release regarding agreement with Geno). These benefits are directly tied to the microfluidic chip. Furthermore, a “Design Review” document (ABS00026616 at 26620) called microfluidic chip. Furthermore, a “Design Review” document (ABS00026616 at 26620) called ABS's microfluidic chip the “heart” of the GSS system. To me, this indicates that any success by the GSS-produced semen (i.e., Sexcel) would be based on the chip that, for the reasons explained in my Infringement Report, embodies the inventions disclosed and claimed in the Cytonome Patents.

(Vacca Rept. (dkt. #131) ¶ 1207.)

         Unlike some general market analysis and conclusion that the product is a commercial success, this opinion at least draws upon Vacca's technical qualifications by tying ABS's description of the commercial benefits of its product to the patented features. As such, while ABS is free to challenge Vacca's conclusion and poke holes in his analysis, the court rejects this basis for excluding Vacca's opinion.

         In sum, this portion of the motion is GRANTED IN PART AND DENIED IN PART. Vacca may not opine on the commercial success of ABS's product. Vacca may, however, draw a comparison between ABS's own description of the reasons for the commercial success of its product based on elements highlighted in ABS's documents and the features of the patented invention based on his expertise as to the latter.

         2. Challenge to Weigl Calculations

         Next, ABS seeks to exclude Vacca's opinion in his rebuttal report that while the prior art reference in “Weigl” claims that it “focuses, ” it does not actually “focus” as the court has construed that term. This opinion is arguably relevant to another secondary consideration -- “failure of others” -- as further support of Vacca's opinion of nonobviousness.[15] ABS argues that Vacca's opinion rests on calculations for which he provided little to no explanation, rendering his methodology unreliable.

         As ST explains at length in its response with reference to Vacca's report, Vacca relied on Weigl's own data in Figure 8B, which shows the number of particles flowing at various velocities in the Weigl device. (ST's Opp'n (dkt. #381) 8 (citing Vacca Rept. (dkt. #131) ¶¶ 64).)[16] Vacca then converted the bar graph in Weigl to data points, and compared those data points to Poiseuille flow curves, which Vacca also explained by reference to its underlying calculations. (Id. at 9, 12; Vacca Rept. (dkt. #131) ¶¶ 66, 71, n.1.) Vacca also explained at his deposition that the flow curves using Poisuille's Law is a well-known formula in fluid dynamics. (Vacca Rept. (dkt. #131) ¶ 65; Vacca Dep. (dkt. #184) 203-207.)

         While ABS is free to explore these calculations with Vacca, the court finds that they are adequately disclosed and explained in his report and appear to be based on “widely accepted scientific knowledge” generally found to be admissible. (ST's Opp'n (dkt. #381) 11 (citing cases).) Similarly, while ABS purports to challenge Vacca's analysis based on its own experimental work, purportedly showing that “Weigl-based designs actually do produce focusing” (ABS's Mot. (dkt. #336) 13), any evidence to the contrary does not form a basis to exclude Vacca's testimony on this subject. Accordingly, this portion of the motion is DENIED.

         3. Challenge to Conception Date Opinion

          Finally, with respect to Vacca, ABS seeks to exclude his opinion as to the conception date of the Cytonome patents. ABS contends that Vacca's testimony fails to address every limitation in the Cytonome patents, specifically arguing that Vacca provides no analysis on: “(1) the requirement in each asserted claim that the secondary focusing region focuses in a different direction than the primary focusing region; (2) the requirement in claim 11 of the '472 patent that the primary sheath flow channel divides upstream into two subchannels; and (3) the requirement in claim 15 of the '476 patent that the sheath flow channel structure include two stacked substrate layers.” (ABS's Mot. (dkt. #336) 16.) See REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954, 962 (Fed. Cir. 2016) (“Conception must include every feature or limitation of the claimed invention.”).

         As ST explains in its opposition, Vacca reviewed the inventors' documents in offering an opinion on when the inventors conceived of and reduced to practice several critical limitations in the inventions. While Vacca may not have analyzed these documents to determine conception and reduction to practices dates for other limitations, there is no such requirement for corroborating evidence, such as Vacca's opinion. See Fleming v. Escort, Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014) (“[N]one of the corroborating evidence . . . discloses each claim limitations as written. But the corroboration requirement has never been so demanding.”). The court credits ABS's argument that Vacca's opinion does not conclusively demonstrate conception dates, but that does not undercut its relevance. Accordingly, this portion of the motion is also DENIED.

         F. Other Motions in Limine (dkt. #339)

         1. Bar evidence or argument concerning IPR proceedings

         ABS seeks an order excluding all evidence and argument about the IPR proceedings, initiated by ABS seeking review of the four Cytonome patents in this case. ABS directs the court to its order excluding any reference by ST to the IPR proceedings in ABS I in support of its motion. (7/22/16 Op. & Order ('503 dkt. #575) 18.) ST does not oppose this motion, except for purposes of impeaching ABS's technical expert Dr. Di Carlo to the extent his testimony conflicts with that provided during the IPR proceedings. Finding this exception warranted, this motion is GRANTED IN PART AS UNOPPOSED AND DENIED IN PART. Neither party ...

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