Magistrate Judge Christopher J. Burke recently granted a Daubert motion seeking to exclude portions of a plaintiff’s damages expert opinion. W.L. Gore & Assocs., Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515-LPS-CJB (D. Del. Oct. 23, 2015). The expert had rendered a reasonably royalty opinion based in part on her conclusion that a certain licensed patent was “similar in importance” to the asserted patents subject to the hypothetical license negotiation analysis in the case. This conclusion was, in turn, based on a conversation the expert had with the plaintiff’s technical expert on infringement. As Judge Burke explained, “it is clear that [the damages expert] relied exclusively on her conversation with [the technical expert] in reaching a conclusion regarding technological comparability of the Goldfarb patent and the asserted patents[.]” Id. at 11. The Court explained that was improper because the technical expert had not, himself, opined as to the technological comparability of the Goldfarb patent and the asserted patents, and therefore, the damages expert “could not simply testify at trial (as she did during her deposition) about what [the technical expert] previously said to her about the topics. . . . In that scenario, [the damages expert] would be simply repeating [the technical expert’s] views on technological comparability without applying her own experience or methodology to those views[.]” Id. at 13 (emphasis in original). This, the Court explained, would “amount to the transmission of hearsay to the jury, which is not permissible.” Id. at 13-14. While the Court granted the motion, it allowed the plaintiff leave to supplement the technical expert’s report to include an opinion on the technological comparability issue which the damages expert could then rely upon.
UPDATE: In a Memorandum Order dated November 24, 2015, Chief Judge Stark has adopted Judge Burke’s order in all respects. See W.L. Gore & Assocs., Inc. v. C.R. Bard, Inc., et al. C.A. No. 11-515-LPS-CJB, Memo. Or. at 3-4 (D. Del. Nov. 24, 2015).