The Software IP Report

Limiting Patent Expert Testimony

By Charles Bieneman

Categories: Software Patents, The Software IP Report

A patent expert lacked a basis for opining where the expert had drawn conclusions about activities of the accused infringer’s customers without inspecting any documents or other evidence concerning what the customers actually did. Further, the expert was not qualified to testify concerning a number of secondary considerations of non-obviousness.  Therefore, the court granted in part the defendant’s Daubert motion in XpertUniverse, Inc. v. Cisco Sys., No. 09-157-RGA (D. Del. March 7, 2013).

Under Daubert and Federal Rule of Evidence 702, the expert’s testimony was required to be reliable concerning alleged “functionalities” practiced by the defendant’s customers, and concerning alleged secondary considerations of nonobviousness.

The plaintiff had evidently conceded that the accused products had “optional functionalities, and that if the end user does not use those features, there is no direct infringement.” Therefore, some proof about customer activities would be necessary to prove indirect infringement. However, the plaintiff’s expert “concluded the customers use the optional features without examining any customer documents or inspecting customer operations to see how the customers actually use the accused Cisco products.”

The court explained that the expert

has call center expertise and computer science expertise. He can testify reliably about whether technology described in Cisco documents about the Expert Advisor, Remote Expert and Pulse products instruct customers to use them in various ways, including ways that would infringe one or more of the patent claims. What is beyond his expertise and knowledge, and therefore in the realm of speculation, is whether and how any particular customer actually used the products, and therefore whether that use violates any method claim. His opinion on the matter contains three sentences. E.g., (Pl. Ex. 1, ¶96) Only the middle one is proper expert testimony. The first and third sentences are simply conclusory, the sort of ipse dixit that is not reliable because it is not the product of [plaintiff’s expert] scientific or call center expertise, or his direct knowledge. Thus, his conclusion about direct infringement by Cisco customers will not be permitted.

The plaintiff’s expert had also opined about “six secondary considerations: commercial success, long-felt need, failure of others, copying, praise, and industry acceptance.” However, “long-felt need” was the only secondary consideration about which he was qualified to testify. Otherwise, the expert was a scientist and technologist, and not a marketing expert. To the extent he was relaying statements of others, his testimony added nothing.

Accordingly, the court held that the plaintiff’s patent expert “may not opine as to how Cisco’s customers actually use the accused products and whether such use infringes any method claim at issue, and he may not opine as to any secondary consideration other than long-felt need.”