Alifax Holding Spa v. Alcor Scientific Inc. et al

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UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF RHODE ISLAND
___________________________________
)
ALIFAX HOLDING SPA, )
)
Plaintiff, )
)
v. ) C.A. No. 14-440 WES
)
ALCOR SCIENTIFIC INC.; and )
FRANCESCO A. FRAPPA, )
)
Defendants. )
___________________________________)
MEMORANDUM AND ORDER
WILLIAM E. SMITH, Chief Judge.
Before the Court is Defendants’ Motion to Exclude the Opinions
of Expert Witness Christopher J. Bokhart (ECF No. 230). Defendants
have asked the Court to exclude Mr. Bokhart’s damages opinions in
their entirety. The Court heard extensive argument on this motion
over two days. The motion was denied as to Bokhart’s testimony
regarding patent infringement damages and the Court reserved rul-
ing with respect to trade secret misappropriation and copyright
infringement damages. This order resolves the motion as to to Mr.
Bokhart’s opinion on copyright infringement damages.
Pursuant to Rule 702 of the Federal Rules of Evidence, the
Court is obliged to serve as a gatekeeper regarding the admission
of expert testimony. See United States v. Diaz, 300 F.3d 66, 73
(1st Cir. 2002); see also Daubert v. Merrell Dow Pharm., Inc., 509
U.S. 579 (1993). “A trial court has broad discretion to admit or
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exclude expert testimony based on its determination as to the
reliability and relevance of the proffered expert testimony.” Mor-
ris v. Rhode Island Hosp., C.A. No. 13-304-ML, 2014 WL 3107296, *5
(Jul. 7, 2014) (citing Gen. Elec. Co. v. Joiner, 522 U.S. 136, 143
(1997)).
If Alifax were to prove copyright infringement, the Copyright
Act requires the copyright owner “to present proof only of the
infringer’s gross revenue . . . .” 17 U.S.C. § 504(b). In the
context of this statute, the phrase “gross revenue” has been in-
terpreted as “gross revenue reasonably related to the infringe-
ment, not unrelated revenues.” On Davis v. The Gap, Inc., 246 F.3d
152, 160 (2d Cir. 2001), as amended May 15, 2001 (emphasis added);
see also MGE UPS Sys., Inc. v. GE Consumer & Indus., Inc., 622
F.3d 361, 367 (5th Cir. 2010) (“‘[G]ross revenue’ refers only to
revenue reasonably related to the infringement.”); William A. Gra-
ham Co. v. Haughey, 568 F.3d 425, 443 (3d Cir. 2009) (“[T]o satisfy
its initial burden of proof, [plaintiff] was required to prove
only that the profits it sought to recover were reasonably related
to the infringement.”) (quotations omitted). Here, Mr. Bokhart
opines that Alifax is entitled to the revenues for all iSED ana-
lyzers and convoyed sales as damages for copyright infringement.
See, e.g., Expert Rpt. of Christopher J. Bokhart ¶ 199, ECF No.
237; Suppl. Expert Rpt. of Christopher J. Bokhart ¶ 11, ECF No.
237-1.
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The Court finds that Mr. Bokhart’s opinion is not reasonably
related to the alleged infringement and is therefore speculative
and not admissible. See Joiner, 522 U.S. at 146 (“[N]othing in
either Daubert or the Federal Rules of Evidence requires a dis-
trict court to admit opinion evidence that is connected to existing
data only by the ipse dixit of the expert.”). The infringement-
related conclusions of Plaintiff’s technical expert, Dr. Bryan
Bergeron, are the exclusive link between Mr. Bokhart’s opinion and
the scope of the alleged harm. See Bokhart Rpt. ¶ 44 nn. 97 & 98
(citing discussions with Bryan Bergeron). The Court has carefully
reviewed both experts’ disclosures. Dr. Bergeron initially opined
that eleven iSED units may have infringed on Alifax’s copyright.
See Decl. of Bryan Bergeron, M.D. ¶ 2, ECF No. 163-18. In his
March 8, 2019 supplemental report, Dr. Bergeron reduced that number
to “at least four iSED instruments.” Suppl. Expert Rpt. of Bryan
Bergeron, M.D. ¶ 9, ECF No. 231-1. Dr. Bergeron has never opined
that all iSED units and related materials infringe on Alifax’s
copyrights. And Mr. Bokhart has never narrowed his damages opinion
to reflect gross revenues from only four iSED instruments.
Gross revenues from the sale of all iSED units and related
materials (the basis of Mr. Bokhart’s damages calculation) are not
reasonably related to the alleged harm caused by four infringing
units. The “analytical gap” between Mr. Bokhart’s proffered opin-
ion and the facts of this case is simply too great to permit. See
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Joiner, 522 U.S. at 146. Mr. Bokhart already issued a supplemental
report in this action, and while Plaintiff’s counsel at oral ar-
gument on this motion – just days before trial – offered to provide
another one, the Court declines to permit this fundamental short-
coming to be remedied on the eve of trial by any eleventh-hour
disclosures. See Fed. R. Civ. P. 26(a)(2)(D)(i)-(ii).
For the foregoing reasons, Defendants’ Motion to Exclude the
Opinions of Expert Witness Christopher J. Bokhart (ECF No. 230) is
GRANTED IN PART. Mr. Bokhart’s copyright damages opinion is hereby
EXCLUDED. Defendants’ request to exclude Mr. Bokhart’s trade se-
cret damages opinion remains under advisement; the Court may issue
a ruling before trial. Consistent with the Court’s bench ruling
on April 11, 2019, Mr. Bokhart may opine on patent-related damages
should the jury find infringement.
IT IS SO ORDERED.
William E. Smith
Chief Judge
Date: April 12, 2019
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