The opinion of the court was delivered by: M. James Lorenz United States District Court Judge
ORDER DENYING MOTION TO EXCLUDE OPINION TESTIMONY OF TREVOR LITTLE [doc. # ] and RESETTING TIME FOR HEARING ON MOTIONS FOR SUMMARY JUDGMENT
The parties have filed cross-motions for summary judgment*fn1 that are set for hearing on October 23, 2009 at 9:30 a.m.*fn2 Defendant's motion for summary judgment relies, in part, on the expert testimony of Trevor Little. Plaintiffs seek to exclude Little's expert opinion, in full or in part, under Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993).
Oral argument on plaintiffs' motion to exclude Little's expert opinion was held on October 14, 2009. Having considered the papers submitted and the arguments of the parties, the Court denies plaintiffs' motion.
Legal Standard for Determining the Admissibility of Expert Testimony Rule 702 of the Federal Rules of Evidence provides that:
If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.
As the Supreme Court explained, Rule 702 requires trial courts to act as a gatekeeper "to ensure that any and all scientific testimony . . . is not only relevant, but reliable." Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 588 (1993). The Daubert Court set forth a two-prong test trial courts must apply in deciding the admissibility of expert testimony: (1) whether the proffered expert testimony is based on "principles and methodology" that are "scientific" and, therefore, reliable, and (2) whether the expert's testimony is relevant by being "sufficiently tied to the facts of the case that it will aid the jury in resolving a factual dispute." at 591, 595.
Relevant expert testimony is admissible only if an expert knows of facts which enable him to express a reasonably accurate conclusion. Jones v. Otis Elevator Co., 861 F.2d 655, 662 (11th Cir. 1988). Opinions derived from erroneous data are appropriately excluded. Slaughter v. Southern Talc Co., 919 F.2d 304 (5th Cir. 1990). Both the determination of reliability itself and the factors taken into account are left to the discretion of the district court consistent with its gatekeeping function under Federal Rule of Evidence 702. Kumho Tire, 526 U.S. 137.
Plaintiffs' arguments boil down to Little's lack of specific knowledge about the meat encasement industry. According to plaintiffs, Little is not an expert in both the knitting arts and meat encasements; therefore, any of his opinions concerning obviousness or noninfringement lack trustworthiness and would not assist the trier of fact.
While acknowledging that Little is an expert in the field of knitting arts, plaintiffs contend that he cannot provide a reliable or relevant opinion because he lacks expertise with respect to the pertinent art as applied in this case, i.e., to meat encasements. Plaintiffs argue that Little must have specialized knowledge of both knitting arts in general and its specialized subset -- "the knitting arts as they pertain to the creation of encasements for meat products." (Reply Memo at 1.) Because Little has no knowledge of the meat encasement industry, plaintiffs contend Little's opinions on the validity and infringement of the '148 patent would be based on speculation and therefore would be inadmissible. Little acknowledged in his deposition that he had had no involvement in terms of knitting in the meat processing industry. (Plts' Exh. D, Little Depo. August 29, 2006 at 151.)
At oral argument, plaintiff's contended that the "whereby" clause following the limitations set forth in Claim one demonstrates that the patent is not merely directed to the knitted structure of the encasement but also to the resulting impression pattern found on the meat products. (Reporter's Transcript of Proceeding ("RT") at 3-5.)
"A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. U.S. Internat'l Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). But a "whereby" clause that sets forth a structural limitation and not merely the results achieved by the claimed structure is a positive limitation of the claim. Scheinman v. Zalkind, 112 F.2d 1017, 1019 (1940).
In the present case, it is only in the "whereby" clause that the result of the casing structure is disclosed:
WHEREBY when a meat product is stuffed into said casing structure under pressure, said meat product forms a bulge within each of said four-sided shapes to thereby define a checker-board pattern on the surface thereof, said stockinette member forming a shield to prevent the adherence of ...