Case 6:17-cv-01217-EFM Document 256 Filed 10/11/22 Page 1 of 5
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF KANSAS
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`LOGANTREE LP,
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`GARMIN INTERNATIONAL, INC.,
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`Plaintiff,
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`Defendant.
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` Case No. 17-1217-EFM
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`MEMORANDUM AND ORDER
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`In this patent infringement suit, Plaintiff LoganTree LP alleges that Defendant Garmin
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`International Inc.’s activity trackers infringe reexamined U.S. Patent No. 6,059,586 (the “ ‘576
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`Patent”). This matter comes before the Court on LoganTree’s Motion to Partially Exclude Certain
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`Opinions of William R. Michalson Under Rule 702 (Doc. 215). Dr. Michalson is Garmin’s expert
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`on non-infringement of the ‘576 Patent. For the reasons discussed below, the Court grants
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`LoganTree’s motion.
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`I.
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`Legal Standard
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`Federal Rule of Evidence 702 governs expert testimony. It provides that a witness
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`“qualified as an expert by knowledge, skill, experience, training, or education” may provide
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`opinion testimony if:
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`(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;
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`(b) the testimony is based on sufficient facts or data;
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`(c) the testimony is the product of reliable principles and methods; and
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`(d) the expert has reliably applied the principles and methods to the facts of the
`case.1
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`Rule 702 imposes a “gatekeeping role” upon the district court to ensure that expert testimony is
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`relevant and reliable and that it will assist the trier of fact.2 Under this rule, the Court must first
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`“determine whether the expert is qualified by knowledge, skill, experience, training, or education
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`to render an opinion.”3 If so, the Court “must determine whether the expert’s opinion is reliable
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`by assessing the underlying reasoning and methodology.”4 And finally, the Court must examine
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`“whether [the] proposed testimony is sufficiently ‘relevant to the task at hand.’ ”5 “Relevant
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`evidence ‘means evidence having any tendency to make the existence of any fact that is of
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`consequence to the determination of the action more probable or less probable than it would be
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`without the evidence.’ ”6 The party offering the expert testimony bears the burden of showing that
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`it is admissible.7
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`1 Fed. R. Evid. 702.
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`2 Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 597 (1993); Schulenberg v. BNSF Ry. Co., 911 F.3d
`1276, 1282 (10th Cir. 2018) (citing United States v. Nacchio, 555 F.3d 1234, 1241 (10th Cir. 2009)).
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`3 Schulenberg, 911 F.3d at 1282 (internal quotation marks and citation omitted).
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`4 Id. at 1283 (quotation marks and citation omitted).
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`5 Bitler v. A.O. Smith Corp., 400 F.3d 1227, 1234 (10th Cir. 2005) (quoting Daubert, 509 U.S. at 597).
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`6 Id (quoting Fed. R. Evid. 401).
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`7 Nacchio, 555 F.3d at 1241.
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`“The [C]ourt has discretion to determine how to perform its gatekeeping function under
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`Daubert.”8 The Court may, but is not required to, conduct a Daubert hearing to fulfill this role.9
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`Here, neither party has requested a Daubert hearing, and after reviewing the parties’ briefs, the
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`Court concludes that the motion can be decided without a Daubert hearing.
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`II.
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`Analysis
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`Garmin offers Dr. Michalson as its expert on Garmin’s non-infringement of the ‘576
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`Patent. In Section XII of Dr. Michalson’s Expert Report, Dr. Michalson opines as to how the
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`Garmin products accused of infringement in this litigation practice Garmin’s patents. LoganTree
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`moves the Court to exclude this opinion at trial because it is legally impermissible and will not
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`help the jury understand the evidence or determine a fact in issue.
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`It is well-settled that “the existence of one’s own patent does not constitute a defense to
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`infringement of someone else’s patent.”10 Thus, the Court agrees with LoganTree that Dr.
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`Michalson cannot opine that Garmin’s products practice Garmin’s patents to support Garmin’s
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`non-infringement defense.
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`Garmin does not dispute that Dr. Michalson’s opinion is not admissible to support
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`Garmin’s non-infringement defense. Instead, Garmin argues that Dr. Michalson’s opinion is
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`admissible because it is essential to Garmin’s critique of LoganTree’s damages claim. Garmin
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`asserts that Garmin’s products include features unrelated to the step counting functionality that
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`8 In re EpiPen (Epinephrine Injection, USP) Mktg. Sales Practices & Antitrust Litig., 2020 WL 1164869, at
`*3 (D. Kan. 2020) (citing Bill Barrett Corp. v. YMC Royalty Co., LP, 918 F.3d 760, 770 (10th Cir. 2019)).
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`9 Id. (citing Goebel v. Denver & Rio Grande W. R.R. Co., 215 F.3d 1083, 1087 (10th Cir. 2000)).
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`10 Bio-Tech. Gen. Corp. v. Genentech, Inc., 80 F.3d 1553, 1559 (Fed. Cir. 1996) (quoting Vaupel
`Texilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 879 n.4 (Fed. Cir. 1991)).
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`LoganTree accuses of infringing the ‘576 Patent. As a result, Garmin argues that the amount of
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`infringement damages must be apportioned so that LoganTree may only recover for the value of
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`its invention rather than the value of the watches as a whole.11 Garmin asserts that several of its
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`patents cover the additional features found in its products, and thus, the required apportionment
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`analysis must analyze the value of the other patented components. According to Garmin, this
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`analysis involves Dr. Michalson first offering an opinion as to whether Garmin’s own patented
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`technology was being used in the products. Then, Garmin’s economic expert, Dr. Finch, used Dr.
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`Michalson’s technical opinions to analyze and critique LoganTree’s damages request by opining
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`that LoganTree’s damages expert did not correctly apportion damages in his calculations.
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`Even in this context, the Court concludes that Dr. Michalson’s opinion is not helpful to the
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`jury.12 Garmin has not pointed to any evidence showing that Dr. Finch performed his own
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`apportionment analysis in critiquing LoganTree’s damages claim. Instead, Dr. Finch opines that
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`LoganTree’s damages expert was required to perform an apportionment analysis and that he did
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`not do so. Dr. Finch provides no analysis as to what value Garmin’s patents would have within
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`the Accused Products or the amount by which that value reduces LoganTree’s damages
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`calculation. Instead, he only opines that LoganTree’s expert failed to properly apportion damages.
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`This critique could be made without reference to whether Garmin’s products practice Garmin’s
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`11 In support of this assertion, Garmin cites Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC,
`879 F.3d 1332, 1347-48 (Fed. Cir. 2018)).
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`12 The parties dispute whether LoganTree is seeking damages for infringement based on Garmin’s watches
`as a whole or just the step-counting feature of the watches. Garmin asserts that LoganTree’s damages expert has
`proffered an opinion that seeks damages on the entire watch. LoganTree calls this assertion a “gross
`mischaracterization.” LoganTree asserts that its damages expert has calculated damages based on Garmin’s licenses
`with third parties covering certain features of the watches. The Court does not address this dispute in this Order.
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`patents. Therefore, Garmin’s apportionment theory is not a persuasive defense to LoganTree’s
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`motion.
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`The Court concludes that Garmin has not met its burden to show that Dr. Michalson’s
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`opinion regarding whether Garmin’s watches practice Garmin’s patents is admissible.13 Dr.
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`Michalson cannot opine that Garmin’s watches practice Garmin’s patents to support his non-
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`infringement opinion. Furthermore, even in a damages context, Dr. Michalson’s opinion is not
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`helpful to the jury because Garmin’s damages expert does not use the patents to perform any kind
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`of economic analysis. Therefore, the Court grants LoganTree’s Motion.
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`IT IS THEREFORE ORDERED that Plaintiff’s Motion to Partially Exclude Certain
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`Opinions of William R. Michalson Under Rule 702 (Doc. 215) is GRANTED.
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`IT IS SO ORDERED.
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`Dated this 11th day of October, 2022.
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`ERIC F. MELGREN
`CHIEF UNITED STATES DISTRICT JUDGE
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`13 See Nacchio, 555 F.3d at 1241 (stating that the proponent of expert testimony bears the burden of showing
`its admissibility) (citation omitted).
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