Robert Bosch, LLC v. Westport Fuel Systems Canada, Inc.

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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROBERT BOSCH LLC,
Plaintiff,
v.
WESTPORT FUEL SYSTEMS
CANADA INC.,
Defendant.
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Case No. 2:23-cv-00038-JRG-RSP
MEMORANDUM ORDER
Before the Court is Defendant Westport Fuel Systems Canada Inc’s Motion to Strike
Certain Opinions of Dr. Richard W. Klopp. Dkt. No. 187. Having considered the Motion, and for
the reasons discussed below, the Motion is GRANTED as to the defenses of Obviousness-Type
Double Patenting (“ODP”) and enablement/indefiniteness of the “fluid passage” term. The Motion
is otherwise DENIED.
I. 	BACKGROUND
Bosch has filed a declaratory judgment action against Westport Fuel Systems Canada Inc.
for non-infringement of U.S. Patent Nos. 6,298,829 (“’829 Patent”) and 6,575,138 (“’138 Patent”)
(together, the “asserted patents”). The asserted patents are generally directed to a fuel injection
valve for use in combustion engines. Dkt. No. 1 at 1-2. Westport counterclaims and seeks
infringement damages, based on Bosch’s CRI3 fuel injectors.
II. 	LEGAL STANDARD
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
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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.
Rule 702 requires a district court to make a preliminary determination, when requested, as
to whether the requirements of the rule are satisfied with regard to a particular expert’s proposed
testimony. See Kumho Tire Co. v. Carmichael, 526 U.S. 137, 149 (1999); Daubert v. Merrell Dow
Pharm., Inc., 509 U.S. 579, 592-93 (1993). District courts are accorded broad discretion in making
Rule 702 determinations of admissibility. Kumho Tire, 526 U.S. at 152 (“the trial judge must have
considerable leeway in deciding in a particular case how to go about determining whether
particular expert testimony is reliable”). Although the Fifth Circuit and other courts have identified
various factors that the district court may consider in determining whether an expert’s testimony
should be admitted, the nature of the factors that are appropriate for the court to consider is dictated
by the ultimate inquiry—whether the expert’s testimony is sufficiently reliable and relevant to be
helpful to the finder of fact and thus to warrant admission at trial. United States v. Valencia, 600
F.3d 389, 424 (5th Cir. 2010).
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. See Micro
Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1391-92 (Fed. Cir. 2003) (applying Fifth Circuit law)
(“When, as here, the parties’ experts rely on conflicting sets of facts, it is not the role of the trial
court to evaluate the correctness of facts underlying one expert’s testimony.”); Pipitone v.
Biomatrix, Inc., 288 F.3d 239, 249-50 (5th Cir. 2002) (“‘[t]he trial court’s role as gatekeeper [under
Daubert] is not intended to serve as a replacement for the adversary system.’ . . . Thus, while
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exercising its role as a gate-keeper, a trial court must take care not to transform a Daubert hearing
into a trial on the merits,” quoting Fed. R. Evid. 702 advisory committee note). As the Supreme
Court explained in Daubert, 509 U.S. at 596, “Vigorous cross-examination, presentation of
contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate
means of attacking shaky but admissible evidence.” See Mathis v. Exxon Corp., 302 F.3d 448, 461
(5th Cir. 2002).
III. 	ANALYSIS
A. 	Invalidity Theories
1. 	Obviousness-Type Double Patenting (ODP)
Westport seeks to strike portions of Dr. Klopp’s report that discuss ODP, because the Court
ruled Bosch’s ODP theories “untimely.” Dkt. No. 187 at 7. Bosch’s response seeks relief
coextensive with its objections to the Court’s ruling. Dkt. No. 212 at 5. Because Bosch’s ODP
theories are untimely, they are not part of this case.1 Therefore, the Court grants Westport’s Motion
to strike the portions of Dr. Klopp’s report that discuss ODP.
2. 	“fluid passage” Term – Indefiniteness and Enablement
In its Brief, Westport argues that the portions of Dr. Klopp’s report that opine on
indefiniteness and enablement of the “fluid passage” term are untimely. Id. at 2-3. Westport argues
that this term is missing from any of Bosch’s enablement-related invalidity contentions, and its
indefiniteness theory was not briefed or argued in claim construction. Id.
Bosch argues that Local Patent Rule 3-6(a)(3)(A) permits amendments to invalidity
contentions within 50 days of the Court’s Markman order. Dkt. No. 212 at 4. Bosch argues that
because the claim construction is not yet “final,” they are merely waiting to amend. Id.
1 On March 1, 2026, Judge Gilstrap overruled Bosch’s Objections to the Order. Dkt. No. 317.
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Bosch’s arguments are not persuasive. Because a magistrate judge’s non-dispositive order
becomes final upon signing, and not when objections are sustained or overruled, the 50-day
window has long since passed. Furthermore, Bosch’s different position at claim construction
waived 	any 	indefiniteness 	arguments 	to 	the 	“fluid 	passage” 	term. 	Therefore, 	Bosch’s
indefiniteness and enablement theories as to the “fluid passage” term are untimely. Because Bosch
cannot introduce these theories, the portions of the report of Bosch’s expert, Dr. Klopp, that discuss
indefiniteness and enablement theories as to the “fluid passage” term likewise cannot be
introduced. Therefore, the Court grants Westport’s motion to strike these portions.
B. 	Amesim and Amerun Models
In its Motion, Westport argues that because Bosch untimely disclosed the Amesim models,
any use by Dr. Klopp should be stricken. Dkt. No. 187 at 10. Westport asserts they first obtained
the Amesim model on October 24, 2025, days before the close of discovery, and the model’s data
on December 19, 2025, after the close of discovery. Dkt. No. 238 at 3. Westport adds that at “least
as early as June 2025, however, Bosch knew that Dr. Klopp intended to rely on an Amesim model,
but failed to disclose it to Westport in Bosch’s June 2025 supplement.” Id. Westport argues that
because of these belated disclosures, the Court should strike the portions of Dr. Klopp’s report that
rely on the Amesim and Amerun Models.
Bosch asserts that Bosch made available the Amesim models more than two months prior
to the close of fact discovery, something they argue Westport’s reply concedes. Dkt. No. 251 at 1;
See also Dkt. No. 238 at 3 (“… Bosch’s CRI3-20 Amesim model in September…”) (emphasis
added). Bosch adds that the October disclosure was merely the model for the “non-amplified”
CRI3 injector, which they argue was a timely response to Westport (later) accusing the non-
amplified CRI3 Injector. In its sur-reply, Bosch argues that Westport cannot make timeliness
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arguments to the “raw data,” because the raw data is merely the model’s results that Westport’s
experts could have obtained on the provided Amerun software. Id. at 1-2.
The Court is not persuaded that Bosch was untimely in disclosing the Amerun and Amesim
models, given all of the circumstances. While Bosch first knew in June 2025 that Dr. Klopp
planned to rely on these models, its September disclosure for the amplified, and October disclosure
for the non-amplified, CRI3 Injectors was timely because the amplified CRI3 Injectors model was
disclosed long prior to the close of discovery, and because the non-amplified CRI3 Injector model
was timely disclosed in response to new accusations. Finally, Westport’s “raw data” arguments
are unpersuasive. Westport had the access to the Amerun software, from which it could have
obtained the same “raw data” once it received the Amesim model. Therefore, the Court will not
strike the portions of Dr. Klopp’s report that rely on Amerun and Amesim models.
C. 	Non-Infringing Alternatives
1. 	Timeliness
Westport argues that because Bosch failed to properly disclose its non-infringing
alternative (NIA) theories in discovery, Dr. Klopp’s NIA theories should be excluded. Dkt. No.
187 at 9-10. Westport argues that because Bosch “never identified” a “modified CRI3 injector” in
discovery, Dr. Klopp’s NIA opinions should be stricken. Id.
In its reply, Bosch cites to two disclosures in its interrogatory responses that sufficiently
identify the NIA theories in Dr. Klopp’s report. Dkt. No. 212 at 5. Bosch argues that prior caselaw
does not require that it identify its NIA as a product. See Empire Tech. Dev. LLC v. Samsung Elecs.
Co., 2025 WL 1669060, at *3 (E.D. Tex. June 12, 2025) (“[plaintiff] does not cite any authority
for its proposition that an expert must identify specific products as NIAs”).
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The court finds Dr. Klopp’s NIA opinions were sufficiently disclosed. Like Empire
Technology, Westport fails to cite authority that requires Bosch to identify specific products as
NIAs. Instead, Bosch’s interrogatory responses identified two2 NIA examples, which they argue
map to Dr. Klopp’s report.3 Regardless of their reliability, the NIA theories in Dr. Klopp’s report
were adequately disclosed.
1. 	Reliability
Westport argues that Dr. Klopp has failed to identify any acceptable or available NIAs,
because he (1) impermissibly included the accused product in his NIA, and (2) because he included
an invention patented at the time of the hypothetical negotiations. Dkt. No. 187 at 12-13. Westport
argues because “It is well-established that an instrumentality accused of infringement cannot be
used as a non-infringing alternative,” a modified CRI3 Injector is not an acceptable NIA. Citing
CLO Virtual Fashion Inc. v. Zhejiang Lingdi Digital Tech. Co., 2025 WL 1888626, at *2 (E.D.
Tex. July 8, 2025). Westport cites to AstraZeneca AB v. Apotex Corp. to argue that because U.S.
Patent No. 5,779,149 (“Hayes Patent”) was in force at the time of the 2005 hypothetical
negotiations, it cannot be properly considered as an available alternative. Id.; 782 F.3d 1324, 1340
(Fed. Cir. 2015).
Bosch first notes that Dr. Klopp does not use the accused product as an NIA. Dkt. No. 212
at 8. Bosch argues that Dr. Klopp’s NIA modifies the accused injector to specifically avoid the
“elongated valve needle” present in the asserted patents. Id. As to timing, Bosch argues that
2 “(1) ‘fuel injectors with the features identified in the Background section of the Asserted Patents, including the fuel
injectors disclosed in U.S. Patent Nos. … ,5,779,149 [Hayes]…’ and (2) ‘a fuel injector with a valve component that
is configured to cooperate with a valve seat so as to seal and unseal that is not elongated would be a non-infringing
alternative as to the ’829 patent. As non-limiting examples, if the length of the valve component in the fuel injector is
not significantly longer than its width or if the length of the valve component is less than or equal to its width, then
the fuel injector would be a non-infringing alternative.’” Dkt. No. 212 at 5.
3 “Dr. Klopp’s NIA opinions at paragraphs 136-143 correspond with (1) and his NIA opinions at paragraphs 143-1453
correspond with (2).” Dkt. No. 212 at 5.
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Westport misstates the law. Bosch cites to Grain Processing, which holds that “The critical time
period for determining the availability of an alternative is the period of infringement for which the
patent owner claims damages, i.e., the accounting period.” Grain Processing Corp. v. Am. Maize-
Prods. Co., 185 F.3d 1341, 1353 (Fed. Cir. 1999). Bosch argues the Hayes Patent remains an
acceptable NIA, because it was available (expired) in the six-year prior to this declaratory action.
In its reply and sur-reply, Westport and Bosch dispute the relevance of Grain Processing
to NIA availability in a reasonable royalty context. Westport argues that because Grain Processing
was a lost profits case, it is not applicable to a reasonable royalty NIA analysis. Dkt. No. 238 at 4.
Bosch argues that because Grain Processing merely discusses NIA availability during the damages
period, regardless of the broader context, the relevant section is broadly applicable. Dkt. No. 251
at 4.
Westport has failed to explain why Grain Processing does not apply here. Westport’s cited
case, Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., merely holds that in a reasonable royalty
analysis, availability is less important, because while NIAs eliminate lost profits, NIAs only reduce
the reasonable royalty amount. 2012 WL 3686736, at *4 (W.D. Pa. Aug. 24, 2012). While this
case holds that a reasonable royalty NIA analysis is not identical, it does not speak to whether a
court can consider NIAs available during the damages period, but not available the time of a
hypothetical negotiation. The Court finds that Grain Processing does apply to a reasonable royalty
NIA analysis.
Under Grain Processing, the relevant time period for the negotiated reasonable royalty
license begins at the start of the damages period. Therefore, the Court can consider NIAs not
available at the time of negotiation, and available during the damages period. While the
hypothetical negotiations were to occur in 2005, the damages period here began in 2017. Because
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the Hayes Patent expired in 2016, it remains available as an NIA for either lost profits, or a
reasonable royalty. Finally, because Dr. Klopp did not put forward the accused product as an NIA,
and because his NIA specifically avoided the asserted patents in light of Hayes, his report did not
improperly rely on the accused products as an NIA. Therefore, Dr. Klopp’s NIA analysis is
sufficiently reliable for admission.
D. 	Claim Construction
In its Motion, Westport argues that Dr. Klopp failed to apply the Court’s constructions of
the terms “valve needle” and “valve member,” and that Dr. Klopp improperly performed claim
construction on the term “during actuation,” which does not appear in any asserted patent’s claims.
Dkt. No. 187 at 13-15. Westport argues that Dr. Klopp uses “dictionary definitions” or “alleged
prior art” to “unilaterally narrow” the terms “valve needle” and “valve member.” Id. at 14.
Westport argues that because Dr. Klopp’s interpretations further narrow the Court’s prior
constructions, they are improper and should be stricken. Finally, Westport argues that because the
term “during actuation” does not appear anywhere in the patents, Dr. Klopp’s use of the term is
unreliable, and thus must be stricken.
Bosch argues that Dr. Klopp merely applies the Court’s construction of the terms “valve
needle” and “valve member,” to illustrate that the accused CRI3 Injectors do not infringe. Dkt. No.
212 at 11-12. Bosch adds that for the term “lift,” Dr. Klopp added additional commentary to opine
to inconsistencies in the report of Westport’s Technical Expert, Michael Leshner. Id. Finally,
Bosch argues that for the non-claim terms, Dr. Klopp’s interpretations merely seek to illustrate
CRI3 Injectors’ noninfringement, and to clarify how a person of ordinary skill would interpret the
plain and ordinary meanings of the terms. Id. at 15.
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The Court is not persuaded that Dr. Klopp’s report performs improper claim construction
in his discussion of valves. While claim construction is a role reserved to the court, experts may
opine as to how a person of ordinary skill would apply the court’s construction, or opine as to
whether a product practices the patent. While Westport argues that Dr. Klopp improperly construes
the terms “valve needle” and “valve member,” as long as he applies the Court’s constructions when
discussing the requirements of the claims, his discussion of the technology is proper. However,
as pointed out in ruling on the motion for summary judgment of non-infringement, “Bosch and Dr.
Klopp are not permitted to substitute different wording for the claim language, which is not based
on any claim construction sanctioned by the Court or agreed to by the parties, including ‘during
actuation’ and changing the tense of the verbs ‘activated/actuated’ to ‘activating/actuating.’” (Dkt.
No. 310 at 4. The Court expects that Dr. Klopp will adhere to the claim construction, while staying
within the scope of his report.
IV. 	CONCLUSION
Having considered the Motion, and for the reasons discussed above, the Court is of the
opinion that the Motion be GRANTED as to Obviousness Type Double Patenting (“ODP”) and
otherwise DENIED.
.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
SIGNED this 3rd day of January, 2012.
SIGNED this 2nd day of March, 2026.
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