Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc.

87 F.Supp.3d 928

Icon-IP Pty Ltd., Plaintiff

v.Specialized Bicycle Components, Inc., Defendant.

Case No. 12–cv–03844–JST

United States District Court, N.D. California.

Signed March 31, 2015

Ashley E. Lavalley, Frederick Christopher Laney, Christopher William Niro, Gina Kyungjin Kim, Niro Haller & Niro, Chicago, IL, Martin L. Fineman, Davis Wright Tremaine LLP, San Francisco, CA, for Plaintiff.

Darrell Loren Olson, Esq., Edward Allan Schlatter, Benjamin Joseph Everton, Knobbe Martens Olsen & Bear, LLP, Irvine, CA, Boris Zelkind, Knobbe Martens Olson & Bear, LLP, San Diego, CA, Elliot Remsen Peters, Rebekah Leigh Punak, Keker & Van Nest, LLP, Timothy James Goodson, Knobbe Martens

ORDER RE: MOTIONS TO EXCLUDE AND MOTIONS FOR SUMMARY JUDGMENT

Re: ECF Nos. 152, 153, 167, 168, 169, 170, 171, 173, 175

JON S. TIGAR, District Judge

Before the Court are the following motions filed by Plaintiff Icon–IP Pty Ltd. (“Icon”) and Defendant Specialized Bicycle Components, Inc. (“Specialized”): (1) Defendant's Motion Pursuant to F.R.E. 702/Daubert to Exclude the Opinions of Dr. Timothy Harrigan, ECF No. 152; (2) Defendant's Motion for Summary Judgment, ECF No. 153; (3) Plaintiff's Motion to Exclude Stephen M. Werner, Ph.D., P.E., ECF No. 168; (4) Plaintiff's Motion to Exclude James McIlvain and Paragraphs 90, 104, 106, 127, 159, 163, 194 and 203 of the Expert Rebuttal Report of Jeffrey Kinrich, ECF No. 169; (5) Plaintiff's Motion to Exclude the Testimony of Stephen G. Kunin and Bar Testimony Attacking the Competency of the Patent Office about Patent Law or Practice, ECF No. 170; (6) Defendant's Motion Pursuant to F.R.E. 702/Daubert to Exclude the Expert Testimony of Frank Bernatowicz, ECF No. 171; (7) Plaintiff's Motion to Exclude Roger Minkow, M.D., ECF No. 173; and (8) Icon's Motion for Summary Judgment, ECF No. 175. The Court strikes the Motion to Exclude the Testimony of Stephen G. Kunin and Bar Testimony Attacking the Competency of the Patent Office about Patent Law or Practice filed at ECF No. 167 as duplicative of the motion filed at ECF No. 170.

For the reasons set forth below, the Court will: (1) deny Specialized's motion to exclude Harrigan; (2) grant in part and deny in part Icon's motion to exclude Werner; (3) deny Icon's motion to exclude McIlvain and certain paragraphs of Kinrich's expert rebuttal report; (4) grant in part and deny in part Icon's motion to exclude Kunin; (5) grant in part and deny in part Specialized's motion to exclude Bernatowicz; (6) deny Icon's motion to exclude Minkow; (7) grant in part and deny in part Specialized's motion for summary judgment; and (8) grant in part and deny in part Icon's motion for summary judgment.

I. BACKGROUND

In this patent infringement action involving bicycle seats, Icon alleges that bicycle seats manufactured, sold, and/or offered for sale by Specialized infringe two of its patents, U.S. Patent No. 6,254,180 (the “ '180 patent”) and U.S. Patent No. 6,378,938 (the “ '938 patent”). ECF No. 1. Specifically, Icon asserts that the accused saddles infringe Claims 1, 3–6, 12, 14, 15, 17, 21, and 22 of the '180 patent and Claims 1–3, 5, and 11–14 of the '938 patent.

The '180 patent, entitled “Bicycle Seat,” claims a support system that includes two buttock support portions. The support portions are coupled to a front portion and can be separated by a longitudinal slot. A hinge between each of the support portions and the front portion allows each support portion to undergo substantially independent arcuate movement having a component at least in a substantially vertical plane when the rider is sitting on the support portions and pedaling. The seat may be formed as a unitary shell, which may be covered by upholstery. Also, the seat may include stop means to limit the amount of movement of the support portions. A mounting rail may be coupled to the lower surface of the shell, and the front portion of the seat may have an undercut to secure this mounting rail.

The '938 patent, entitled “Cycle Seat,” claims a bicycle seat comprising (1) an inclined abutment means dimensioned to receive only the portion of the rider's anatomy adjacent to the ischial bones, so that soft tissue substantially outside the ischial bones is not compressed by the seat; and (2) support means that couple the seat to the bicycle so that the abutment means is permanently transverse with respect to the longitudinal axis of the bicycle. This arrangement means that, without other supports, it is not possible for a rider in a generally vertical position to permanently sit on the seat. The seat may consist of metal and plastic and may be padded for comfort.

The parties have each filed motions for summary judgment, and have collectively filed six motions to exclude expert testimony. The Court will first consider the motions to exclude, and then turn to the summary judgment motions.

II. JURISDICTION

The Court has jurisdiction over this action for patent infringement pursuant to 28 U.S.C. § 1338.

III. MOTIONS TO EXCLUDE TESTIMONY

A. Legal Standard

Federal Rule of Evidence 702 provides:

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise 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 and methods; and

(d) the expert has reliably applied the principles and methods to the facts of the case.

The law of the regional circuit governs a district court's evaluation of expert testimony in patent cases. See Micro Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1390–91 (Fed.Cir.2003) (whether to admit expert testimony is a procedural question that is not unique to patent law and is governed by the law of the regional circuit). In the Ninth Circuit, Rule 702 “contemplates a broad conception of expert qualifications.” Hangarter v. Provident Life & Accident Ins. Co., 373 F.3d 998, 1015 (9th Cir.2004) (quoting Thomas v. Newton Int'l Enters., 42 F.3d 1266, 1269 (9th Cir.1994) ). “Shaky but admissible evidence is to be attacked by cross examination, contrary evidence, and attention to the burden of proof, not exclusion.” Primiano v. Cook, 598 F.3d 558, 564 (9th Cir.2010). To testify as an expert, an individual “need not be officially credentialed in the specific matter under dispute.” Massok v. Keller Indus., Inc., 147 Fed.Appx. 651, 656 (9th Cir.2005) (citing United States v. Garcia, 7 F.3d 885, 889–90 (9th Cir.1993) ).

On the other hand, “[u]nder Daubert, the trial court must act as a ‘gatekeeper’ to exclude junk science that does not meet Federal Rule of Evidence 702's reliability standards.” Ellis v. Costco Wholesale Corp., 657 F.3d 970, 982 (9th Cir.2011) (citing Kumho Tire Co. v. Carmichael, 526 U.S. 137, 145, 147–49, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999) ); see Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). To satisfy Daubert, scientific evidence must be both reliable and relevant. 509 U.S. at 590–91, 597, 113 S.Ct. 2786. The proponent of the expert bears the burden of proving admissibility. Lust By & Through Lust v. Merrell Dow Pharm., Inc., 89 F.3d 594, 598 (9th Cir.1996).

The law pertaining to Daubert's reliability prong has been summarized as follows:

Reliable testimony must be grounded in the methods and procedures of science and signify something beyond “subjective belief or unsupported speculation.” Daubert, 509 U.S. at 590, 113 S.Ct. 2786. The inferences or assertions drawn by the expert must be derived by the scientific method. Id. In essence, the court must determine whether the expert's work product amounts to “ ‘good science.’ ” Daubert v. Merrell Dow Pharms., Inc., 43 F.3d 1311, 1315 (9th Cir.1995) (“Daubert II ”) (quoting Daubert, 509 U.S. at 593, 113 S.Ct. 2786 ). In Daubert, the Supreme Court outlined factors relevant to the reliability prong, including: (1) whether the theory can be and has been tested; (2) whether it has been subjected to peer review; (3) the known or potential rate of error; and (4) whether the theory or methodology employed is generally accepted in the relevant scientific community.” Daubert, 509 U.S. at 593–94, 113 S.Ct. 2786. The Supreme Court emphasized the “flexible” nature of this inquiry. Id. at 594, 113 S.Ct. 2786. As later confirmed in Kumho Tire, “Daubert's list of specific factors neither necessarily nor exclusively applies to all experts or in every case. Rather the law grants a district court the same broad latitude when it decides how to determine reliability as [the court] enjoys in respect to its ultimate reliability determination.” 526 U.S. at 141–42, 119 S.Ct. 1167.

Abarca v. Franklin Cnty. Water Dist., 761 F.Supp.2d 1007, 1021 (E.D.Cal.2011). “The relevance prong under Daubert means that the evidence will assist the trier of fact to understand or determine a fact in issue.” Henricksen v. ConocoPhillips Co., 605 F.Supp.2d 1142, 1154 (E.D.Wash.2009) (citing Daubert, 509 U.S. at 591–92, 113 S.Ct. 2786 ).

B. Defendant's Motion Pursuant to F.R.E. 702/Daubert to Exclude the Opinions of Dr. Timothy Harrigan (ECF No. 152)

Specialized seeks an order excluding all opinions and testimony of Icon's expert, Dr. Timothy Harrigan, relating to (1) his manual testing of bicycle seats and (2) finite element modeling (“FEA”), which is a computer-based analysis method. ECF No. 152. Specialized contends that Harrigan's manual testing of saddles is unreliable and irrelevant because it does not involve measurements, criteria, or controls; because it is based on his subjective determinations; and because it is unrelated to the loading that occurs during rider pedaling. Id. at 3. Specialized contends that the FEA model analyses are unreliable and irrelevant because they are based on incorrect assumptions regarding the structure and materials of the saddles and...