United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
W. DARRAH, United States District Court Judge
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 . For the reasons set for more fully below,
Plaintiff's Motion  is granted in part and denied in
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.
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).
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).
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.
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. 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
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  is granted as to any opinions or testimony on
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 ...