United States District Court, D. Colorado
STEVEN LEE BRANDT, an individual, JAMES CLAY WALTERS, an individual, and COLORADO BOX COMPANY, INC., a Colorado corporation, Plaintiffs,
VON HONNECKE, an individual, CHASE HONNECKE, an individual, and S & H SHEET METAL, INC., a Colorado corporation, Defendants.
RAYMOND P. MOORE UNITED STATES DISTRICT JUDGE
matter is before the Court on Plaintiffs' Motion to
Exclude Opinions of Messrs. Honnecke and Gardner (the
“Motion”) (ECF No. 125), seeking to exclude
Defendants' two non-retained experts Von Honnecke and Tom
Gardner. Defendants have filed a Response, to which
Plaintiffs have filed a Reply. (ECF Nos. 136, 141.) The
Motion is ripe for resolution.
accuse Defendants of infringing U.S. Patent No. 8, 999, 029
(the “'029 Patent”), raising claims of direct
infringement, inducing infringement, and contributory
infringement. Defendants raise numerous defenses and
counterclaims of noninfringement, invalidity, and
unenforceability of the '029 Patent. Plaintiffs served
affirmative expert reports from Michael Aitkin (infringement)
and Mark Pedigo (damages) on or about August 29, 2017, the
deadline for affirmative expert disclosures. Thereafter, on
September 29, 2017, the rebuttal expert disclosure deadline,
Defendants served two Fed.R.Civ.P. 26(a)(2)(C) disclosures
(hereafter, “Reports”), one of Mr. Honnecke and
one of Mr. Gardner. Messrs. Honnecke and Gardner are offered
as rebuttal experts on the issues of infringement,
enforceability, and validity. Mr. Honnecke is also offered as
a rebuttal expert on the issue of damages. Mr. Gardner is
also offered to testify under Fed.R.Evid. 701.
Motion seeks to exclude Messrs. Honnecke's and
Gardner's testimony based on the following arguments: (1)
10 of the 13 proffered topics allegedly relating to
“infringement, validity, and enforceability” are
not proper rebuttal but, instead, untimely affirmative
testimony; (2) they are not qualified to testify regarding
the topics addressed; and (3) their testimony is based on
assumptions and speculation, is biased, and is unreliable.
Defendants argue otherwise.
Rebuttal and Fed.R.Civ.P. 26
evidence is that “intended solely to contradict or
rebut evidence on the same subject matter identified by
another party.” Fed.R.Civ.P. 26(a)(2)(D)(ii). Thus,
rebuttal reports are by nature responsive and necessitate a
showing supporting the opposite conclusion of those which the
opposing party's expert arrived at in his report. See
103 Investors I, L.P. v. Square D. Co., 372 F.3d 1213,
1217-18 (10th Cir. 2004) (expert report proper rebuttal where
“its main thrust was to rebut” opposing
expert's assertions). They are not the place for
presenting new arguments, 1-800 Contacts, Inc. v. Lens.
com, Inc., 755 F.Supp.2d 1151, 1167 (D. Utah 2010),
rev'd in part on other grounds, 722 F.3d 1229
(10th Cir. 2013), or raising subjects which were not
addressed in the expert report purportedly being rebutted,
see Deseret Mgmt. Corp. v. United States, 97 Fed.Cl.
272, 274 (Fed. Cir. 2011) (rebuttal expert report must
address the same subject matter as the report it
contradicts). Accordingly, those parts of an expert's
rebuttal report that address subjects that were not addressed
in the affirmative expert report purportedly being rebutted
should be excluded. Plumley v. Mockett, 826
F.Supp.2d 1053, 1065 (C.D. Cal. 2010) (citing First
Years, Inc. v. Munchkin, Inc., 575 F.Supp.2d 1002, 1008
(W.D. Wisc. 2008)); D'Andrea Bros. LLC v. United
States, No. 08-286C, 2012 WL 644010, at *3 (Fed. Cl.
Feb. 10, 2012) (same).
Daubert and Fed.R.Evid. 702
702 of the Federal Rules of Evidence (“Rule 702”)
governs the admission of expert evidence in federal court.
Fed.R.Evid. 702; Kumho Tire Co., Ltd. v. Carmichael,
526 U.S. 137, 147 (1999). Rule 702 provides as follows:
A witness who is qualified as an expert by knowledge, skill,
experience, training or education may testify in the form of
an opinion or otherwise 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.
Fed. R. Evid. 702. Under Rule 702, the Court performs a
two-step analysis. First, the Court “must determine
whether the expert is qualified by ‘knowledge, skill,
experience, training, or education' to render an
opinion.” 103 Investors I, L.P. v. Square D
Co., 470 F.3d 985, 990 (10th Cir. 2006) (quoting Rule
702). Second, the specific proffered opinions must be
assessed for reliability. See id.
assessing reliability, the Court's role in considering
proposed expert evidence is one of a “gatekeeper”
- to ensure the “‘evidence admitted is not only
relevant, but reliable.'” United States v.
Gabaldon, 389 F.3d 1090, 1098 (10th Cir. 2004) (quoting
Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579,
589 (1993)); Kumho Tire, 526 U.S. at 147. Factors
that may be relevant in performing this role include: (1)
whether a theory or technique can be or has been tested; (2)
whether a theory or technique has been subjected to peer
review and publication; (3) whether there is a high known or
potential rate of error to a technique and whether there are
standards controlling the technique's operation; and (4)
whether the theory or technique enjoys general acceptance
within a relevant community. Id. at 149-150. These
factors, however, may or may not be relevant,
“depending on the nature of the issue, the expert's
particular expertise, and the subject of his
testimony.” Id. at 150 (quotation omitted).
proponent of expert evidence bears the burden of establishing
its admissibility. Ralston v. Smith & Nephew
Richards, Inc., 275 F.3d 965, 970 n.4 (10th Cir. 2001).
opinion testimony may be admitted if it is helpful to the
jury; if it is based on the perception of the witness; and if
it is not expert testimony under Fed.R.Evid. 702.
See Fed. R. Evid. 701. Thus, a lay witness
“may ‘offer observations that are common enough
and require a limited amount of expertise, if
any.'” United States v. Kearn, 863 F.3d
1299, 1311-12 (10th Cir. 2017), cert. denied, 138
S.Ct. 2025, 201 L.Ed.2d 282 (2018) (brackets and ellipses
omitted) (quoting James River Ins. Co. v. Rapid Funding,
LLC, 658 F.3d 1207, 1214 (10th Cir. 2011)). He or she
may not, however, express an opinion on “‘matters
which are beyond the realm of common experience and which
require the special skill and knowledge of an expert
witness.'” Kearn, 863 F.3d at 1311-12
(quoting Randolph v. Collectramatic, Inc., 590 F.2d
844, 846 (10th Cir. 1979)).
The Number of Experts
contend Defendants exceeded the number of experts allowed
under the Scheduling Order as they have three where the
maximum number is two. Plaintiffs cite no authority to
support exclusion on the facts of this case and provide no
evidence of any prejudice by Defendants' proffer.
Further, the Court has excluded Mr. Whitehair as an expert.
On this record, the Court will not preclude Mr.
Honnecke's or Mr. Gardner's testimony on the basis
that Defendants have exceeded the number of experts allotted.
Untimely Rebuttal Testimony
intend to offer Messrs. Honnecke and Gardner to testify about
13 topics asserted to be relevant to the issues of
infringement, enforceability, and invalidity: “(1)
publication, use and sale of prior art devices and methods
making and using the same, which render the patent claims
invalid and/or unenforceable; (2) the level of ordinary skill
in the pertinent art at the time of the invention; (3) the
scope and content of the prior art; (4) the differences
between the prior art and the claimed invention; (5) the
motivation to modify the prior art, or combine references, to
arrive at the claimed invention; (6) obviousness to persons
having ordinary skill in the art in and/or in view of the
above; (7) anticipation based upon  those prior art devices
and methods, on a claim-by claim basis; (8) comparison of the
elements of the claims, on a claim-by-claim basis, and
respective absence of direct infringement; (9) comparison of
the prior art and opinion of the scope of equivalency, on a
claim-by-claim basis, in view of the prior art devices and
methods by a person of ordinary skill in the art[;] (10) 
absence of infringement, on a claim-by-claim basis, under the
doctrine of equivalents; (11) absence of infringement of any
alleged third party apparatus or method, on a claim-by-claim
basis; (12) substantial non infringing uses for any apparatus
or components thereof, including staple articles of commerce
capable of being a substantial ...