Expert Witness Profiler

Category: Intellectual Property Expert Witness

  • Intellectual Property Expert Witness’ Testimony Admitted Because it Does Not Invoke the Entire Market Value Rule

    Intellectual Property Expert Witness’ Testimony Admitted Because it Does Not Invoke the Entire Market Value Rule

    Plaintiff Wireless Alliance, LLC (“Plaintiff” or “Wireless Alliance”) brought allegations against Defendants AT&T Mobility LLC, AT&T Services, Inc., and AT&T Corp. (“Defendants” or “AT&T”). Wireless Alliance asserted that AT&T infringed on several United States patents concerning enhancements to cellular networking systems. The patents in question include United States Patent No. 9,144,106 (the “‘106 patent”), Patent No. 9,565,662 (the “‘662 patent”), and Patent No. 10,045,383 (the “‘383 patent”), collectively referred to as the “Asserted Patents.” Wireless Alliance holds exclusive licensing rights for the ‘106 and ‘662 patents and owns the ‘383 patent through assignment.

    Defendants filed a motion to strike the testimony of Wireless Alliance’s damages expert, Jim W. Bergman.

    Intellectual Property Expert Witness

    Jim W. Bergman, the Founder and President of Bergman Consulting, held a B.A. in Economics and an M.B.A. from the University of California at Irvine, along with a Chartered Financial Analyst (CFA) designation. He pursued a Master of Computer Science degree from the Georgia Institute of Technology.

    Before establishing Bergman Consulting in 2017, he led Conway MacKenzie’s national intellectual property litigation group and worked as an in-house economic consultant for various national law firms for over a decade. With nearly ten years of experience in the information technology sector, Bergman obtained multiple industry-recognized certifications in hardware, software, and networking.

    He specialized in intellectual property, commercial, and bankruptcy litigation, serving as a testifying or consulting expert in areas such as business litigation, patent and technology issues, trade secrets, trademarks, securities litigation, business valuation, bankruptcy reorganization, solvency, and general damages.

    Want to know more about the challenges Jim W. Bergman has faced? Get the full details with our Challenge Study report. 

    Discussion by the Court

    A. Switiching Royalty Bases

    Defendants contended that Bergman improperly switched royalty bases by deriving a per-patent family device rate for Ericsson’s portfolio and applying it to the service revenues of the carriers. They argued that this methodology contradicted Federal Circuit precedent, as the royalty should depend on whether the Defendant manufactured the device or was the end user. The carriers maintained that no carrier would pay a royalty based on Ericsson’s cellphone or infrastructure rates based on the carrier subscriber revenue. However, the Court found that Defendants did not provide sufficient grounds to strike Bergman’s report under Rule 702 and Daubert. The Court determined that Defendants’ concerns highlighted credibility disputes rather than issues of reliability.

    B. Entire Market Value Rule and Apportionment

    Defendants further sought to strike Bergman’s report, alleging that he improperly used the entirety of their subscriber revenue, raising concerns that the Plaintiff aimed to present large revenue numbers to influence the jury’s perception of damages. However, the Parties had already agreed to a motion in limine addressing this concern. Defendants also argued that Bergman misapplied the Entire Market Value Rule (EMVR) without adequate support. In response, the Plaintiff asserted that Bergman conducted multiple patent- and Defendant-specific analyses, supported by technical opinions, to calculate apportionment factors for the incremental value of the infringing features over non-infringing features. And based on that, apportioned the revenue from the allegedly infringing features and thus did not implicate the EMVR. The Court was satisfied that Bergman’s approach did not invoke the EMVR. What remains is a fact issue.

    C. Unreliable Patent Rates

    Additionally, Defendants argued that Bergman made two methodological errors: first, by improperly applying essentiality studies of declared patents to charted patent families, and second, by basing his reliance on a certain claim that the top 10% of patents in a portfolio drive 84% of the value. They also pointed out inconsistent statements from the Plaintiff’s other expert. In contrast, Plaintiff contested Defendants’ view, asserting that Bergman used the claim in question only in the final step to differentiate apportionment rates between high-value and lower-value patents. The Court allowed Defendants to cross-examine Bergman regarding potentially inconsistent statements but found no basis to strike his testimony.

    Legal Standards

    An expert witness may provide opinion testimony 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.”

     Importantly, in a jury trial setting, the Court’s role under Daubert is not to weigh the expert testimony to the point of supplanting the jury’s fact-finding role; instead, the Court’s role is limited to that of a gatekeeper, ensuring that the evidence in dispute is at least sufficiently reliable and relevant to the issue before the jury that it is appropriate for the jury’s consideration

    Held

    The Court denied Defendants’ motion to strike the testimony of Plaintiff Wireless Alliance LLC’s damages expert, Jim W. Bergman.

    Key Takeaways:

    The Court upheld Bergman’s methodology when Defendants argued he improperly switched royalty bases, declaring it to be insufficient grounds for exclusion. It rejected concerns that his use of subscriber revenue aimed to unduly influence the jury’s perception of damages, noting this issue had been addressed in a prior motion in limine. While Defendants claimed Bergman misapplied the Entire Market Value Rule (EMVR), the Court determined he conducted adequate analyses to support his calculation of the apportionment factors.

    Please refer to the blog previously published about this case:

    Telecommunications Expert Witness’ Opinions Regarding 3GPP Availability Admitted

    Case Details:

    Case Caption: Wireless All., LLC v. AT&T Mobility LLC
    Docket Number: 2:23cv95
    Court: United States District Court, Texas Eastern
    Order date: October 24, 2024
  • Intellectual Property Expert Witness Cannot Cloak her Testimony on Validity with her Experience

    Intellectual Property Expert Witness Cannot Cloak her Testimony on Validity with her Experience

    EPP and Paveloc both construct and sell “erosion prevention” systems that are used in retaining walls. The systems are made up of interlocking hiocks. EPP has a patent on its “Channel Lock II block” (US Patent No. 8,123,435) (“the 435 patent”).

    At some point the business relationship soured. Paveloc stopped making the EPP product and began manufacturing a competing product, the ARP block. EPP alleges that the ARP block is a “knock off” of the Channel Lock II block and that Paveloc was making the ARP blocks using the same molds that FPP had provided to Paveloc to make the Channel Lock II product.

    In 2020, Fort Bend County Levee Improvement District No. 2 opened a new project for bidding. It awarded the contract for the project to TLC, a general contractor for construction projects. TLC took bids from subcontractors for erosion prevention blocks. Both Paveloc and EPP submitted hids. TLC accepted Paveloc’s bid. According to EPP, Paveloc got the project by using the ARP block, the alleged knockoff of EPP’s Channel Lock II block. 

    With the trial just a week away, Plaintiff supplemented its expert Evans’ report, offering opinions on the USPTO patent process and the validity of the ‘435 Patent as a rebuttal to Defendants’ claim of invalidity. 

    Defendants argued that this supplementation is untimely and circumvented this Court’s ruling that Evans is not a person of ordinary skill in the art, unqualified to give opinions on invalidity.

    At this point, the Court is faced with several evidentiary motions, including the Defendants’ motion to strike Andrea H. Evans’ supplemental report and Plaintiff’s omnibus motion in limine to exclude the testimony of Defendants’ expert—Dan Bullock.

    Intellectual Property Expert Witness

    Andrea Evans is a former patent and trademark examiner, has a civil and environmental engineering degree from Georgia Tech, and worked at an engineering company between college and law school. 

    She has been a licensed attorney in good standing by the State of Texas since 2003. Evans has been a member of the USPTO Patent Bar since 2007. She has been a member of the U.S. Supreme Court Bar since 2009.

    Get the full story on challenges to Andrea Evans’ expert opinions and testimony with an in-depth Challenge Study. 

    Engineering Expert Witness

    Daniel B. Bullock is a principal at Bullock, Bennett & Associates, LLC, an engineering and geoscience firm. He is a licensed professional engineer in Texas and also holds inactive professional engineer licenses in Arkansas, New Jersey, and Louisiana. He has over thirty years of professional experience working in the field of water resources and geotechnical engineering.

    Want to know more about the challenges Dan Bullock has faced? Get the full details with our Challenge Study report.

    Discussion by the Court

    Andrea Evans

    As a patent examiner, however, Evans did not work in the field of erosion prevention or cement block manufacturing, but instead, examined time-measuring devices, keyboards, and press printing systems. Consequently, this Court held that she is not a person of ordinary skill in the relevant art, and thus, she cannot opine on invalidity of the patent.

    The question then becomes whether Evans can offer substantially similar expert opinions regarding the validity or invalidity of the ‘435 Patent as she did in the excluded report simply by couching it in her patent-examiner experience.

    Evans is a patent attorney with extensive experience in patent law and procedure. As this Court has held, however, she is not a qualified technical expert on the issues of infringement or validity. Thus, she is not qualified to give opinions on issues that are “exclusively determined from the perspective of ordinary skill in the art.” To hold otherwise would be to convert every former patent examiner into a person of ordinary skill in every art, regardless of how tenuous their patent-examination experience is to the patent dispute at hand. 

    EPP may argue, Evans can testify to what a patent examiner may determine. The Court held that Evans cannot establish any similar connection between her experience in time-measuring devices, keyboards, and press-printing systems and the claimed invention of certain concrete revetment blocks. Thus, Evans cannot cloak her expert testimony on validity with her experience as patent examiner. That would amount to a circumvention of this Court’s order that she is not qualified as a person of ordinary skill in the art.

    Dan Bullock

    Plaintiff asserts in parts of its Omnibus Motion in Limine that the testimony of Defendants’ expert—Dan Bullock—should be excluded. The Court observed that the two subparts regarding Bullock are verbatim duplicates of Plaintiff’s earlier motion to strike the declaration of Dan Bullock.

    This Court has already ruled on the motion to strike. The Court denied the motions in limine because the Plaintiff has not provided any new facts, reasons, or authority for it to deviate from its earlier ruling.

    Held

    The Court granted Defendants’ motion to strike Andrea Evans to the extent the report purports to discuss invalidity and/or what a reasonable patent examiner would or would not conclude regarding the 435 Patent.

    Moreover, the Court denied Plaintiff’s motions in limine regarding the testimony of Defendants’ expert—Dan Bullock.

    Key Takeaway:

    Evans is not a qualified technical expert on the issues of infringement or validity. Thus, she is not qualified to give opinions on issues that are “exclusively determined from the perspective of ordinary skill in the art.” To hold otherwise would be to convert every former patent examiner into a person of ordinary skill in every art, regardless of how tenuous their patent-examination experience is to the patent dispute at hand. 

    Case Details:

    Case Caption: Pave/Lock/Plus Ii Llc V. Erosion Prevention Products Llc Et Al
    Docket Number: 4:20cv3557
    Court: United States District Court, Texas Southern
    Order Date: October 8, 2024
  • Intellectual Property Expert Witness’ Testimony Excluded Because it Would Not Assist the Jury on the Issue of Functionality

    Intellectual Property Expert Witness’ Testimony Excluded Because it Would Not Assist the Jury on the Issue of Functionality

    Plaintiff, Southwestern Manufacturing, LLC alleged that it owned the “MULTI WEDGE” trademark in connection with a stylized wedge tool primarily used in the industrial and automotive industries (the “MULTI WEDGE Product”). Plaintiff alleged that it used the mark in commerce since May 2003 and received federal registration of the mark (the “MULTI WEDGE Mark”) on January 17, 2017.

    Defendant Wilmar LLC (“Wilmar”) requested the right to sell a “private label” version of the MULTI WEDGE Product. In response, Plaintiff supplied Wilmar with information about and samples of the MULTI WEDGE Product. Plaintiff filed a trademark infringement suit after it learned that Defendants Wilmar and Advance Auto Parts (“Advance”) used the MULTI WEDGE Mark and MULTI WEDGE Dress by selling their own versions of the MULTI WEDGE Product.

    Defendants sought to preclude Plaintiff’s expert witness, Edwin A. Sisson, from testifying or presenting evidence at trial. 

    Intellectual Property Expert Witness

    Edwin A. Sisson is an intellectual property attorney and focuses his practice on trademarks, trade dress, patents, copyrights, and trade secrets. Prior to becoming an attorney, Sisson received an undergraduate degree in Chemical Engineering from the University of Nebraska in Chemical Engineering and worked in various roles for The Goodyear Tire and Rubber Company, Shell Chemical Company, and M&G Chemicals.

    Gain a comprehensive understanding of Edwin Sisson’s qualifications and casework history with his Expert Witness Profile report.

    Discussion by the Court

    Plaintiff offered Sisson as a rebuttal expert on the issue of whether the MULTI WEDGE Dress “is a legally non-functional tool design.”

    Defendants argued that Sisson’s opinion and testimony should be excluded because he (1) lacked the requisite qualifications; (2) offered impermissible legal conclusions; and (3) provided testimony that is highly prejudicial. 

    Here, the Sisson Report impermissibly offered legal conclusions regarding the functionality of the MULTI WEDGE Dress. In concluding that “[t]he Duckbill Design is not legally functional,” Sisson improperly opined on the law. For example, the Sisson Report provided that “a design cannot be registered if it is functional.” Sisson also critiqued Defendants’ expert opinion as being “not consistent with the law.”

    The Court held that the materials relied upon by Sisson were also telling. The Sisson Report primarily relied on legal decisions, the Ninth Circuit’s model jury instructions, various textbooks and materials published by the U.S. Patent and Trademark Office, and third-party websites.

    In the Court’s view, the bulk of the Sisson Report “instructed the jury on the law, or how to apply the law to the facts of the case.” The Court held that the Sisson Report read like a legal brief. Section E illustrated this point by setting forth the four Disc Golf factors courts used to determine functionality and using each factor as a sub-header.

    Held

    The Court denied Defendants’ Daubert motion to preclude Plaintiff’s expert witness, Edwin A. Sisson.

    Key Takeaways:

    Rule 702 requires that expert testimony “help the trier of fact to understand the evidence or to determine a fact in issue.” Consistent with Rule 704(a), the Ninth Circuit has repeatedly affirmed that an expert witness cannot give an opinion as to her legal conclusion, i.e., an opinion on an ultimate issue of law.

    Case Details:

    Case Caption: Southwestern Mfg. Llc V. Wilmar Llc Et Al
    Docket Number: 2:22cv8541
    Court: United States District Court, California Central
    Order Date: July 16, 2024
  • Intellectual Property Expert Witness’ Report Held to be a Treatise on Copyright Law in a Breach of Contract Case

    Intellectual Property Expert Witness’ Report Held to be a Treatise on Copyright Law in a Breach of Contract Case

    In 1996, after almost a decade of searching, Intersal, Inc. (“Intersal”), a marine research and recovery company, discovered the storied Queen Anne’s Revenge (“QAR”), flagship of the notorious pirate Blackbeard, off the coast of North Carolina. The vessel reportedly sank near Beaufort Inlet in 1718, and it has been the stuff of legend since. Although no treasure chests of gold were found in the debris, historical relics have been recovered from the QAR, and the rights to make images, replicas, and narratives about the relics have amounted to another form of treasure. Persistent disputes over the division of these rights have led to this litigation.

    On 1 September 1998, Intersal, DNCR, an executive agency of the State of North Carolina and a non-party, the Maritime Research Institute (“MRI”), entered into an agreement regarding the QAR and any resulting projects (the “1998 Agreement”). As a result of the 1998 Agreement, Intersal relinquished its right to receive 75% of the coins and precious metals recovered from the QAR in exchange for promotion opportunities arising from the QAR “Project,” as well as for assurances from DNCR that the El Salvador Permit would be renewed except for just cause.

    Plaintiff, Intersal sought damages for the Defendant, Wilson’s alleged breaches of Section 16(b) of the 2013 Settlement Agreement. Defendant Wilson serves as the Secretary of DNCR.

    Defendants retained Deborah Gerhardt, a professor of intellectual property law at the University of North Carolina—Chapel Hill School of Law. Gerhardt produced a report in which she answered four questions posed by Defendants’ counsel:

    1. Did the law permit someone to own rights in a narrative, such as the story about salvaging Blackbeard’s ship? If so, did intellectual property law give Intersal the exclusive right to commercial or noncommercial narratives about the QAR project even if such narratives were created by independent third parties?
    2. Did the 2013 Agreement give Intersal the exclusive right to commercial or noncommercial narratives about the QAR project? Specifically, did the 2013 Agreement prevent third parties from publishing content they created or obtained from lawful sources?
    3. Did the DNCR place Intersal’s intellectual property in the public domain?
    4. Did Intersal have an ownership interest in QAR photos taken by DNCR?

    In her thirteen-page report, Professor Gerhardt opined that (1) intellectual property law did not provide any foundation for Intersal to claim exclusive rights in the narrative (commercial or not) of salvaging the Queen Anne’s Revenge (“QAR”); (2) the Court should not have enforced any provision in a way that gave Intersal the exclusive right to telling the story of the QAR salvage as such an interpretation would have violated constitutional and federal public policy; (3) DNCR did not place any of Intersal’s intellectual property in the public domain because Intersal had failed to identify any protectable intellectual property; and (4) Intersal did not have an ownership interest in QAR photos taken by DNCR because no express written copyright assignment existed.

    Plaintiff filed a motion to exclude expert opinions from Deborah R. Gerhardt arguing they constituted inadmissible jury instructions and her own interpretation of the 2013 Agreement.

    Intellectual Property Expert Witness

    Deborah R. Gerhardt is a distinguished member of the Carolina Law faculty, having joined in 2009 and currently holding the position of Reef C. Ivey II Excellence Fund Term Professor of Law. Her expertise lies in intellectual property law, with a particular focus on the intersection of law and creativity. Gerhardt’s teaching portfolio includes courses such as Arts Entrepreneurship, Art Law, Copyright Law, Intellectual Property Law, and Trademark Law. Recognized for her excellence in teaching, she received UNC’s Distinguished Teaching Award for Post-Baccalaureate Instruction in 2018. Gerhardt is also a prolific writer, having authored numerous influential essays and articles covering topics such as copyright, trademark, entrepreneurship, and art law.

    Discussion by the Court

    Gerhardt admitted that her report reflected her legal opinions and conclusions regarding intellectual property law and her interpretation of the 2013 Agreement. Defendants contended that Professor Gerhardt’s testimony would assist the jury in understanding the facts. Defendants further asserted that Professor Gerhardt should be permitted to explain the difference between “commercial” and “non-commercial” because it was a technical term.

    The Court disagreed with Defendants noting that Gerhardt’s report was tantamount to a well-written legal memorandum on intellectual property law based on Gerhardt’s admission that her testimony would assist the jury in understanding the law, not the facts. It was after all the Court’s duty to ensure that the jury was appropriately instructed on the law with respect to the issues in this case.

    The Court observed that as far as the distinction between “commercial” and “non-commercial” was concerned, Gerhardt is an expert in the law, but she has not established herself as an expert in the publication of digital images such that she would be qualified to define a term of art in that arena. Moreover, nowhere in her report did Gerhardt actually offer a definition of “commercial” or “non-commercial.” Instead, she opined that use of the word “commercial” in the 2013 Agreement was “atypical.”

    Gerhardt did not directly address whether the hypothetical licensing model used by the Plaintiff’s expert was the correct approach as far as the case was concerned. Instead, Professor Gerhardt explained that because Intersal did not own the copyright to Defendants’ images, under copyright law, it would not be entitled to a licensing fee for their use.

    Gerhardt was found to misunderstand Intersal’s position. Intersal freely admitted it did not own the copyright to Defendants’ images and did not seek a license fee on that basis. Intersal’s claim focused on the value it allegedly lost when Defendants made the images publicly accessible without watermarks, time stamps, and weblinks. The Plaintiff’s expert used a lost licensing fee as a proxy to calculate the damages Intersal claimed to have suffered by not being able to publish its own images or to otherwise monetize third-party access to the site and its artifacts. Gerhardt’s proposed testimony did not address whether this use of a license fee was acceptable in the field of media rights, nor was her expertise in copyright law of any relevance in this regard.

    Because Gerhardt’s report was a treatise on copyright law, the Court agreed that it would confuse and mislead the jury when the Plaintiff demanded exclusion of the same under Rule 403.

    Held

    The Court granted the Plaintiff’s motion to exclude expert opinions from Defendant’s expert Deborah R. Gerhardt.

    Key Takeaways:

    Key takeaways regarding expert testimony include ensuring relevance and expertise, understanding the role of the expert, and distinguishing between matters of law and fact. Experts should provide clear, precise opinions directly related to the case, supported by evidence and reasoning understandable to the jury. They should avoid confusing or misleading the jury and address opposing arguments while ensuring their expertise is directly applicable to the case. Courts may exclude expert testimony if its probative value is outweighed by the risk of confusion or prejudice under Rule 403. Therefore, it’s crucial for experts to provide testimony that is relevant, clear, and appropriately limited in scope to assist the trier of fact in understanding complex issues without unduly influencing their judgment.

    Case Details:

    Case Caption: Intersal, Inc. v. Wilson
    Docket Number: 15 CVS 9995
    Court: North Carolina Superior Court, Wake County
    Citation: 2024 NCBC LEXIS 19 
    Order Date: February 2, 2024