In a recent memorandum order, Judge Robinson ordered the exclusion of certain defense expert testimony in the upcoming, bifurcated damages portion of a patent infringement case. SRI Int’l Inc. v. Internet Security Sys., Inc., C.A. No. 04-1199-SLR (D. Del. October 31, 2011). Judge Robinson first concluded that proffered testimony regarding possible “design arounds” as alternatives to the patented technology was entirely speculative. An expert, she said, “may offer an opinion incorporating proffered facts, [but may not] reiterate the lay testimony and provide a conclusory opinion based on the lay testimony.” Id. at 5. The excluded testimony included:
(1) A speculative opinion on Georgia Pacific factor 13 that was not based on an analysis of the portion of the realizable profit that should be credited to the invention as distinguished from non-patented elements, the manufacturing process, business risks, or significant features or improvements added by the infringer, id.;
(2) A damages opinion that relied on a third party patent without making a substantive comparison of that patent with the patents-in-suit, id. at 5-6;
(3) Conclusory opinions regarding which features of the infringing product are and are not covered by the patents-in-suit that contradicted evidence presented at the liability trial, id. at 6-7; and
(4) An opinion that the inventions in question had little value as they offered only minor, incremental improvements over prior art, id. at 7-8.
With regard to the last of these opinions, Judge Robinson noted in a footnote that the expert report “reads dangerously close to an obviousness opinion.” Id. n.8. As the defendants had already failed on obviousness arguments, Judge Robinson ordered damages witnesses not to “opine that a system/method having all of the patented features was concurrently in use in the prior art.” Id.