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Loggerhead Tools, LLC v. Sears Holdings Corp.

United States District Court, N.D. Illinois, Eastern Division

September 20, 2016



          JOHN W. DARRAH, United States District Court Judge

         Plaintiff LoggerHead Tools, LLC (“LoggerHead”) filed a Second Amended Complaint (“SAC”) against Defendants Sears Holdings Corporation (“Sears”) and Apex Tool Group, LLC (“Apex”) (collectively, the “Defendants”), alleging, inter alia, various patent and trademark violations associated with United States Patents No. 6, 889, 579 (the “‘579 Patent”) and No. 7, 992, 470 (the “‘470 Patent”). Plaintiff has filed a Motion to Exclude Dr. Frank Fronczak's Opinions on Willful Infringement and Obviousness [279]. For the reasons set for more fully below, Plaintiff's Motion [279] is granted in part and denied in part.


         Dan Brown was awarded the ‘579 Patent in 2005 and the ‘470 Patent in 2011 and is the founder and President of LoggerHead. (SAC, ¶¶ 10, 11, 13.) Brown founded LoggerHead in 2005 and began selling the Bionic Wrench. (Id. at ¶ 17.) In 2009, Sears placed an order for 15, 000 Bionic Wrench units for sale over the Christmas season. (Id. at ¶ 38.) In 2010, Sears ordered 75, 000 Bionic Wrench units. (Id. at ¶ 39.) Sears and LoggerHead entered into a one-year supply agreement, which had an effective start date of February 1, 2011, and expired February 1, 2012. (Id. at ¶ 40.) Sears represented that they would purchase more Bionic Wrench units in 2012. (Id. at ¶ 47.) In September 2012, Sears announced the “Max Axess Locking Wrench” (“MALW”) and began retailing the MALW in their stores. (Id. at ¶ 62.) Defendants submitted an expert report by Dr. Frank Fronczak, who is an expert in the field of mechanical engineering design, on the invalidity of the patents at issue.


         Under the Federal Rule of Evidence 702, trial courts must determine, as a precondition to admissibility, whether expert evidence rests on a reliable foundation and is relevant. Manpower, Inc. v. Ins. Co. of Pennsylvania, 732 F.3d 796, 806 (7th Cir. 2013). “Expert testimony is admissible when the testimony is reliable and would assist the trier of fact to understand the evidence or determine a fact at issue in a case.” Lewis v. CITGO Petroleum Corp., 561 F.3d 698, 705 (7th Cir. 2009) (citing Fed.R.Evid. 702; Daubert v. Merrell Down Pharmaceuticals, Inc., 509 U.S. 579, 589-91 (1993)). The party seeking to introduce expert testimony bears the burden of demonstrating that the proposed testimony satisfies this standard by a preponderance of the evidence. Id. However, “the rule on expert testimony [is] notably liberal.” Krist v. Eli Lilly & Co., 897 F.2d 293, 298 (7th Cir. 1990).


         In assessing the admissibility of proposed expert testimony, the focus “must be solely on principles and methodology, not on the conclusions that they generate.” Daubert, 509 U.S. at 595. A court must “make the following inquiries before admitting expert testimony: first, the expert must be qualified as an expert by knowledge, skill, experience, training, or education; second, the proposed expert must assist the trier of fact in determining a relevant fact at issue in the case; third, the expert's testimony must be based on sufficient facts or data and reliable principles and methods; and fourth, the expert must have reliably applied the principles and methods to the facts of the case.” Lees v. Carthage College, 714 F.3d 516, 521-22 (7th Cir. 2013). There is no bright-line reliability test, and the reliability inquiry should be “flexible.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 139 (1999).


         Plaintiff first seeks to exclude Dr. Fronczak's expert opinions regarding willfulness as it is not relevant, and Dr. Fronczak has no particular expertise in this area. In patent cases, willfulness must be proven by clear and convincing evidence. E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1440 (Fed. Cir. 1988). The Supreme Court has recently held that, “[t]he subjective willfulness of a patent infringer, intentional or knowing, may warrant enhanced damages, without regard to whether his infringement was objectively reckless.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S.Ct. 1923, 1933 (2016). The Supreme Court instructed that “courts should continue to take into account the particular circumstances of each case in deciding whether to award damages, and in what amount.” Id. Enhanced damages based on willfulness “should generally be reserved for egregious cases typified by willful misconduct.” Id. at 1934.

         “[E]xpert testimony is helpful to the jury if it concerns a matter beyond the understanding of the average person.” Davis v. Duran, 276 F.R.D. 227, 231 (N.D. Ill. 2011). “Unless the expertise adds something, the expert is at best offering a gratuitous opinion, and at worst is exerting undue influence on the jury . . . .” United States v. Hall, 93 F.3d 1337, 1343 (7th Cir. 1996). “[E]xpert testimony does not assist the trier of fact when the jury is able to evaluate the same evidence and is capable of drawing its own conclusions without the introduction of a proffered expert's testimony.” Aponte v. City of Chicago, No. 09 C 8082, 2011 WL 1838773, at *2 (N.D.Ill. May 12, 2011). Here, Dr. Fronczak's testimony on willfulness is not helpful to the jury, as it does not concern a matter beyond the understanding of the average person. There is no reason why the finder of fact could not evaluate any evidence and decide whether Defendants' conduct was “willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or indeed characteristic of a pirate.” Halo Elecs., Inc., 136 S.Ct. at 1932. Because Dr. Fronczak's opinion on whether Defendants' conduct was willful would not assist the trier of fact, it is not relevant.[1] Further, there is no reason to believe that Dr. Fronczak has any particular qualifications above and beyond that of a layperson to determine the state of mind of another.

         Defendants argue that Dr. Fronczak's opinion is a direct rebuttal to Plaintiff's own expert witness's opinions on willfulness. No expert witness should opine on willfulness. Whether or not Sears and Apex's actions constituted willful infringement and what weight should be given to outside counsel's opinions on infringement is the province of the fact finder. Plaintiff's Motion to Exclude [279] is granted as to any opinions or testimony on willfulness.


         Plaintiff also argues that Dr. Fronczak's opinions on obviousness are not proper. Specifically, Plaintiff argues that Dr. Fronczak did not conduct a legally sufficient obviousness analysis. “A party seeking to invalidate a patent as obvious must demonstrate by clear and convincing evidence that a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1068-69 (Fed. Cir. 2012) (internal citations and quotations omitted). The mere fact that an invention is “a combination of elements that were known in the art at the time of the invention” is not enough for obviousness. Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356 (Fed. Cir. 1999). “The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 ...

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