United States District Court, N.D. Illinois, Eastern Division
NOT DEAD YET MANUFACTURING, INC., d/b/a NDY MFG, INC. Plaintiff,
PRIDE SOLUTIONS, LLC AND MAY WES MANUFACTURING, Defendants.
MEMORANDUM OPINION AND ORDER
Rebecca R. Pallmeyer, Judge
Not Dead Yet Manufacturing, Inc. ("NDY") brings
this patent infringement suit against Defendants Pride
Solutions, LLC ("Pride Solutions") and May West
Manufacturing ("May West"). Plaintiff's
president, Kenneth E. Shoup, is named as the inventor on a
number of United States patents related to agricultural
equipment. The two patents at issue in this case concern
Shoup's invention of a "quick connect and
disconnect" apparatus for the assembly of agricultural
devices known as "stalk stompers." Stalk stompers
are implements attached to the front of a combine or tractor
that flatten cornstalks after they have been cut, thereby
protecting the vehicle's tires from damage caused by the
sharp stalks. Shoup's invention-the quick connect and
disconnect apparatus-makes it easier to attach and remove
stalk stompers from a tractor or combine by allowing users to
secure the stalk stompers to a combine's toolbar assembly
without the use of tools. Shoup was awarded a patent for the
"quick connect/disconnect coupling for a stalk
stomper" in 2013. U.S. Patent No. 8, 418, 432 (the
"'432 Patent"). In 2013, he was awarded a
related patent that includes additional claims directed to
the overall quick connect/disconnect design concept. U.S.
Patent No. 8, 745, 963 (the "'963 Patent").
Plaintiff alleges that certain of Defendants' stalk
stomper products, which also contain quick connect and
disconnect features, infringe at least one claim of both the
'432 Patent and the '963 Patent.
October 2015, this court issued an opinion construing certain
disputed terms in the patents' claims. See Not Dead
Yet Mfg., Inc. v. Pride Sols., LLC, No. 13 C 3418, 2015
WL 5829761, at *1 (N.D. Ill. Oct. 5, 2015). Following the
court's claim construction decision, technical experts on
both sides submitted expert reports on the issue of
infringement. Plaintiff's expert, Mr. Larry Johnson, is
an engineer by training, and he currently works as the owner
and principal consulting engineer of an engineering
consulting company. He received a bachelor's degree in
mechanical engineering and a master's degree in
agricultural engineering, both from the University of
Wisconsin-Madison, and he also holds a master's degree in
business administration from the University of Detroit.
Defendant's expert, Dr. Frederick Elder, is also an
engineer by training. Dr. Elder is president of his own
engineering consulting company. He holds a bachelor's
degree in mechanical engineering from the University of
Kansas, a master's degree in mechanical engineering from
Wichita State University, and a Ph.D. in mechanical
engineering from the University of Wisconsin-Madison.
the experts reach different conclusions about whether
Defendants' products, the so-called "QD1" and
"QD2" stalk stompers, infringe Plaintiff's
patents. Plaintiff's expert, Mr. Larry Johnson, opines
that the QD1 product literally infringes claim 1 of the
'432 Patent and claims 6 and 7 of the '963 Patent. As
for the QD2 product, Mr. Johnson opines that it infringes
those same patent claims under the doctrine of equivalents.
Defendants' expert, Dr. Frederick Elder, responded to Mr.
Johnson in a rebuttal report. In that report, Dr. Elder
offers his opinion that the QD1 and QD2 products do not
infringe claim 1 of the '432 Patent or claims 6 and 7 of
the '963 Patent, either literally or under the doctrine
of equivalents. According to Dr. Elder, the QD1 product
does not contain a "plate member" and thus does not
contain the "retention means on the plate member"
claimed in claim 1 of the '432 Patent. He contends,
further, that the QD1 product does not contain a
"retention member of the support member" claimed by
the '963 Patent. Dr. Elder opines that the QD2 product
also lacks these claimed elements, among others, and he
asserts that several of the accused elements of the QD2
product perform different functions, in a different way, from
the claimed elements and thus do not infringe under the
doctrine of equivalents.
has moved to exclude  certain portions of Dr.
Elder's opinions under Rule 702 of the Federal Rules of
Evidence and Daubert v. Merrell Dow Pharmaceuticals,
Inc., 509 U.S. 579 (1993). Plaintiff argues that
although Dr. Elder may be technically qualified to offer his
opinions in this case, certain of those opinions are
unreliable and irrelevant. Specifically, Plaintiff insists
that some of Dr. Elder's opinions are inconsistent with
substantive patent law and with this court's claim
construction rulings or are otherwise irrelevant to
Plaintiff's infringement charges in this case. Defendants
respond that Plaintiff's arguments regarding points of
law are premature and should be addressed at the summary
judgment stage. They also argue that Plaintiff's quibbles
about the accuracy of Dr. Elder's opinions are
contentions about the weight his opinions should be afforded,
not about their admissibility. For the reasons discussed
below, the court grants Plaintiff's motion in part and
denies it in part.
qualified expert may testify only 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 or methods; and (d) the
expert has reliably applied the principles and methods to the
facts of the case." Fed.R.Evid. 702. Under
Daubert, the district court plays the role of
gatekeeper and must determine whether the expert's
proposed testimony is relevant and reliable. Higgins v.
Koch Dev. Corp., 794 F.3d 697, 704 (7th Cir. 2015).
"When analyzing the relevance of proposed testimony, the
district court must consider whether the testimony will
assist the trier of fact with its analysis of any of the
issues involved in the case." Smith v. Ford Motor
Co., 215 F.3d 713, 718 (7th Cir. 2000). When it comes to
determining the reliability of the expert's testimony,
the district court must assess whether the reasoning or
methodology underlying the expert's proposed testimony is
scientifically valid and whether that reasoning or
methodology properly can be applied to the facts in issue.
Daubert, 509 U.S. at 592-93. The focus of that
inquiry "must be solely on principles and methodology,
not on the conclusions that they generate."
Daubert, 509 U.S. at 595. The soundness of the facts
underpinning the expert's analysis and the correctness of
the conclusions he reaches based on that analysis "are
factual matters to be determined by the trier of fact, or,
where appropriate, on summary judgment." Smith,
215 F.3d at 718.
court concludes that some of Dr. Elder's opinions would
not help the trier of fact to understand the evidence or to
determine a fact in issue; those opinions are irrelevant and
must be excluded. Other opinions that Plaintiff challenges,
however, are relevant to facts in issue in this case and are
not so unreliable as to warrant exclusion. The court
discusses Dr. Elder's inadmissible and admissible
opinions in turn.
Construction of the Term "Support Member"
report, Dr. Elder opines that the term "support member,
" which is included in claim 6 of the '963 Patent,
is synonymous with the term "plate member" or that
it encapsulates "each of a plate member, cross bar
member and a pair of sidewall members." (Rep. of
Frederick T. Elder, Ex. 1 to Defs.' Resp. Mem. in
Opp'n to Pl.'s Mot. to Excl. [137-1] (hereinafter
"Elder Rep."), at 44 - 45, 47-48, 53, 56, 59, 63.)
Plaintiff argues that Dr. Elder's attempt to define the
term "support member" is a claim construction
opinion. The court should prohibit him from presenting that
opinion to the trier of fact, Plaintiff asserts, because
"the construction of a patent, including terms of art
within its claim, is exclusively within the province of the
court." Markman v. Westview Instruments, Inc.,
517 U.S. 370, 372 (1996); see also CytoLogix Corp. v.
Ventana Med. Sys., Inc., 424 F.3d 1168, 1172 (Fed. Cir.
2005) (finding district court erred by admitting expert
testimony regarding claim construction). In any event,
Plaintiff contends, Dr. Elder's opinion about the meaning
of "support member" should be excluded because
Defendants waived any argument about the construction of that
term by failing to raise the issue at the claim construction
stage. In response to this waiver argument, Defendants note
that the local patent rules limit the number of patent terms
the parties may present to the court for construction, but
the rules do not suggest that disputes concerning terms not
presented for construction are thereby waived. In addition,
they argue that it would be unfair to exclude Dr. Elder's
opinion regarding the meaning of "support member"
when Plaintiff's expert, Mr. Johnson, applies his own
understanding of the term's meaning in his expert report.
Defendants thus respond to Plaintiff's waiver argument,
they have not addressed Plaintiff's contention that Dr.
Elder's opinion should be barred because it is an
improper attempt at claim construction. Dr. Elder's
proposed definition for "support member" is not
based on his technical expertise, but rather, on an
interpretation of the language used in claim 6 of the
'963 Patent in light of the language used in the
patent's specification. (See, e.g., Elder Rep.
at 44-45.) Dr. Elder thus appears to be offering "a
classic claim construction determination." The
Medicines Co. v. Mylan Inc., No. 11-CV-1285, 2014 WL
1979261, at *6 (N.D. Ill. May 15, 2014); see Id.
(excluding expert's claim construction opinion where
expert's quotation of patent specification as basis for
opinion "further evidence[d] that his opinion
concern[ed] claim construction issues"). The court
concludes that because Dr. Elder's opinion concerning the
meaning of "support member" is an improper attempt
at claim construction, it must be excluded. This does not
necessarily mean, however, that Defendants are barred from
making an argument about the meaning of the term. Should
either side believe that additional claim construction is
necessary, a party move for leave to present additional claim
terms for construction. Whether it would be proper for the
court to consider additional terms for construction, or
whether claim construction arguments not raised earlier have
been waived, are matters that can be addressed in the context
of such a motion.
Testimony Regarding the Structural Integrity of Elements of
preferred embodiment of Patent '432, identified as Figure
6 in the patent, see NotDead Yet, 2015 WL
5829761, at *2, depicts a thin, flat, rectangular plate
(labeled "item 26"), attached to the stalk stomper,
that connects to a mounting bracket on the tractor or
combine's toolbar during assembly of the product. See
Id. The depiction of a thin plate is an embodiment of
the "plate member" limitation from claim 1 of the
'432 Patent. See id.; ('432 ...