Plaintiff sued defendant for patent and trademark violations. Both hired expert witnesses and both challenged the testimony of each witness.
Facts: This case (Loggerhead Tools, LLC v. Sears Holdings Corporation – United States District Court – Northern District of Illinois – September 20th, 2016) involves patent and trademark violations. The court issued two separate opinions on Daubert motions (here and here). Dan Brown, the founder and president of Loggerhead, patented and began selling the Bionic Wrench in 2005. In 2009 and 2010, Sears ordered 15,000 and 75,000 Bionic Wrench units. Sears represented that they would purchase more Bionic Wrench units in 2012, but in September 2012 announced the “Max Axess Locking Wrench” (MALW), made by Apex and began selling it in their stores. Loggerhead then sued Sears Apex for patent and trademark violations. Sears and Apex hired Dr. Frank Fronczak (Patent Expert Witness) and Loggerhead hired Christopher J. Bokhart (Trademark Expert Witness) to prove their cases. Both parties filed motions to exclude the expert witness testimony.
Discussion: Apex challenged the expert witness report of Christopher J. Bokhart on the basis of the report and the reliability. Regarding patent royalty damages, Bokhart made an assumption of a hypothetical negotiation between the two parties. Apex argues that Bokhart’s estimate of royalty damages is too high in that he did not include proper factors in assuming that Loggerhead would have sold a Bionic Wrench for every MALW sold and incorrectly included forms for lost profits in his calculations.
For his lost profits calculations, Bokhart relied on Brown’s deposition and his testimony that Loggerhead lost out on sales to other retailers. He admitted that he cannot calculate a specific amount of lost profits. Any arguments in this area go to the weight of of the evidence and not their admissibility. In addition, the court concluded that any disputes on the ability to calculate price erosion go to the weight of the evidence as well.
However, the court opined that Bokhart cannot use the “increased manufacturing costs” or “loss of goodwill” in his reasonable royalty analysis.
Dr. Fronczak expert opinion was on willingness and obviousness of the infringement. Loggerhead argues that Dr. Fronczak’s expert opinions on these issues should be excluded as it is not relevant and that he does not have particular expertise in this area. The court agreed, stating that Dr. Fronczak’s testimony on willingness is not helpful to the jury as it does not go beyond the the understanding of the layperson. In addition, the court agreed that Dr. Fronczak does not have any qualifications beyond that of a layperson.
Loggerhead also argues that Dr. Fronczak did not conduct a legally sufficient obviousness analysis, that he had to perform an element-by-element comparison to determine obviousness. In addition, he did not give a reason for combining prior art references. The court disagreed, stating that any argument regarding the specific elements in hindsight rather than the totality of the circumstances goes to the weight of the evidence, not the admissibility.
Conclusion: Plaintiff’s motion to exclude the expert witness testimony of Dr. Frank Fronczak is denied in part and granted in part. Defendant’s motion to exclude the expert witness testimony of Christopher J. Bokhart is denied in part and granted in part.