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Not Dead Yet Manufacturing, Inc. v. Pride Solutions, LLC

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

November 28, 2016



          Rebecca R. Pallmeyer, Judge

         Plaintiff 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.

         In 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.

         Predictably, 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.[1] 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.

         Plaintiff has moved to exclude [135] 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.


         A 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.

         The 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.

         I. Inadmissible Testimony

         A. Construction of the Term "Support Member"

         In his 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.

         Although 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.

         B. Testimony Regarding the Structural Integrity of Elements of Defendants' Products

         The 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 ...

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