1 2 3 4 5 6 UNITED STATES DISTRICT COURT 7 SOUTHERN DISTRICT OF CALIFORNIA 8 9 GOLDEN EYE MEDIA USA, INC., a Case No.: 3:18-cv-02109-BEN-LL California corporation, 10

ORDER:

Plaintiff, 11 v. (1) DENYING DEFENDANTS’ 12

MOTION TO EXCLUDE THE

TROLLEY BAGS UK LTD, a 13 TESTIMONY AND OPINIONS OF corporation of the United Kingdom; and

EXPERT TIMOTHY FLETCHER;

14 BERGHOFF INTERNATIONAL, INC., a and Florida corporation, 15 Defendants. (2) DENYING PLAINTIFF’S 16

MOTION TO EXCLUDE THE

17 TESTIMONY AND OPINIONS OF TROLLEY BAGS UK LTD, a EXPERT LAURA BJURSTROM 18 corporation of the United Kingdom; and 19 BERGHOFF INTERNATIONAL, INC., a [Doc. Nos. 47, 48] Florida corporation, 20 Counter-Claimants, 21 v. 22 GOLDEN EYE MEDIA USA, INC., a 23 California corporation; FARZAN 24 DEHMOUBED, an individual; and JENNIFER DUVALL, an individual, 25 Counter-Defendants and Third-Party 26 Defendants. 27 28 /// 1 Before the Court is Plaintiff and Counter-Defendant Golden Eye Media USA, 2 Inc.’s (“Plaintiff”) Motion to Exclude Portions of Laura Bjurstrom’s Initial Expert Report 3 and Opinions therein. Also, before the Court is Defendants and Counter-Claimants 4 Trolley Bags UK Ltd. and Berghoff International, Inc.’s (“Defendants”) Motion to 5 Exclude the Opinions and Testimony of Plaintiff’s Expert Timothy Fletcher. The 6 motions are fully briefed. The Court finds the motions suitable for determination on the 7 papers without oral argument, pursuant to Civil Local Rule 7.1.d.1. For the reasons set 8 forth below, both motions are DENIED. 9 LEGAL STANDARDS 10 Motion to Exclude 11 Rule 702 of the Federal Rules of Evidence provides that: 12 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: 13 (a) the expert's scientific, technical, or other specialized knowledge will help the 14 trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; 15 (c) the testimony is the product of reliable principles and methods; and 16 (d) the expert has reliably applied the principles and methods to the facts of the case. 17

18 Under Rule 702, the trial court acts as a gatekeeper and ensures that the proffered 19 scientific testimony meets certain standards of both relevance and reliability before it is 20 admitted. Daubert v. Merrell Dow Pharm., Inc. ("Daubert I"), 509 U.S. 579, 590 (1993). 21 The party proffering expert testimony has the burden of showing the admissibility of the 22 testimony by a preponderance of the evidence. Daubert I, 509 U.S. at 592 n. 10. 23 "[J]udges are entitled to broad discretion when discharging their gatekeeping function" 24 related to the admission of expert testimony. United States v. Hankey, 203 F.3d 1160, 25 1168 (9th Cir. 2000) (citing Kumho Tire Co. v. Carmichael, 526 U.S. 137, 150-53 26 (1999)). The Court considers four factors to determine if expert testimony will assist the 27 trier of fact: "(i) whether the expert is qualified; (ii) whether the subject matter of the 28 testimony is proper for the jury's consideration; (iii) whether the testimony conforms to a 1 generally accepted explanatory theory; and (iv) whether the probative value of the 2 testimony outweighs its prejudicial effect." Scott v. Ross, 140 F.3d 1275, 1285-86 (9th 3 Cir. 1998). 4 DISCUSSION 5 The factual and procedural background of this action is well known to the parties 6 and need not be repeated to adequately address the issues at hand. The Court first 7 considers Defendants’ motion, followed by Plaintiff’s. 8 I. DEFENDANTS’ MOTION TO EXCLUDE 9 Defendants move to exclude the opinions and testimony of Timothy Fletcher 10 (“Fletcher”), Plaintiff’s expert, regarding the parties’ respective patent rights and 11 obligations. The motion is based on three arguments: (1) Fletcher improperly opines that 12 the ‘828 Patent is invalid as indefinite, anticipated, functional, and obvious; (2) Fletcher 13 improperly opines that Plaintiff’s reusable shopping bags do not infringe the ‘828 Patent; 14 and (3) Fletcher improperly opines that Plaintiff’s ‘912 Patent is not invalid as obvious or 15 anticipated. (See Doc. No. 47.) 16 As an initial matter, Defendants’ motion contains repeated assertions that Mr. 17 Fletcher’s expert reports should be excluded as unreliable since the included opinions and 18 conclusions were not properly disclosed or arose from Mr. Fletcher’s application of the 19 wrong legal standard. (See generally Doc. No. 47.) Plaintiff responds that “[a] simple 20 reading of Mr. Fletcher’s reports and his deposition transcript show that” he not only 21 properly disclosed his conclusions but had also confirmed that the correct legal standard 22 had been applied. (Doc. No. 50 at 4.) Having reviewed each party’s submissions, the 23 Court finds Fletcher’s analysis sufficiently reliable and that Plaintiff has adequately 24 refuted Defendants’ basis for wholesale exclusion. Accordingly, Fletcher’s expert reports 25 are admissible but remain subject to cross-examination. 26 27 28 1 A. Opinions Regarding the Invalidity of the ‘828 Patent. 2 (1) Opinions Regarding the Indefiniteness of the ‘828 Patent 3 Defendants seek to exclude Mr. Fletcher’s opinion that the ‘828 Patent is invalid 4 based on indefiniteness. Specifically, Defendants argue that Plaintiff failed to serve 5 invalidity contentions in response to Defendants’ preliminary infringement disclosures. 6 (Doc. No. 47 at 4.) Moreover, Plaintiff has not sought to amend its invalidity 7 contentions in order to add this new purported ground of invalidity.1 Id. at 5. 8 Plaintiff responds that “Mr. Fletcher’s indefiniteness opinion hardly represents an 9 ambush.” (Doc. No. 50 at 7.) In fact, Defendants have “not shown that” it “has suffered 10 any prejudice regarding Mr. Fletcher’s indefiniteness opinion.” Id. Moreover, 11 Defendants’ expert “had an opportunity to – and in fact did – rebut and respond to Mr. 12 Fletcher’s indefiniteness opinion,” and Defendants extensively questioned Mr. Fletcher 13 “on his indefiniteness analysis during his deposition.” Id. 14 The Court has considered the indefiniteness opinions being challenged here and 15 deems that they can be addressed through “[v]igorous cross-examination, presentation of 16 contrary evidence, and careful instruction on the burden of proof,” (Summit 6, LLC v. 17 Samsung Elecs. Co, 802 F.3d 1283, 1295-96 (Fed. Cir. 2015), and left to the fact-finder 18 to determine credibility. The Court will accordingly DENY the motion on this point. 19 (2) Opinions Regarding the Anticipation of the ‘828 Patent 20 Next, Defendants claim that Fletcher didn’t consider any differences between the 21 ‘828 Patent and the prior art when opining on anticipation. (Doc. No. 47 at 7.) In 22 response, Plaintiff claims “Mr. Fletcher admitted that there were differences in the 23 designs of the prior art and the ‘828 Patent.” (Doc. No. 50 at 8.) As such, “if Mr. 24 Fletcher admitted differences between the prior art designs and the ‘828 Patent, he clearly 25

26 27 1 Defendants argue that, “[i]nstead of seeking or obtaining permission from the Court to further amend its invalidity contentions, Golden Eye improperly attempts to 28 1 considered those differences in opining on anticipation of the ‘828 Patent.” Id. While 2 Mr. Fletcher’s analysis is thin, and a close call, the Court finds it is sufficiently detailed 3 to be presented at trial. The Defendants’ motion is DENIED on this point. 4 (3) Opinions Regarding the Functionality of the ‘828 Patent 5 Defendants next argue that Mr. Fletcher’s opinions on the functionality of the ‘828 6 Patent be excluded because he “did not analyze whether the claimed design ‘in its 7 entirety’ was dictated by function.” (Doc. No. 47 at 8.) In fact, Defendants claim Mr. 8 Fletcher only analyzed whether “two specific elements of the design—the bag’s body 9 proportions and rails—were functional.”2 Id. As a result, Mr. Fletcher’s conclusions 10 should be deemed erroneous since he failed to view the “claimed design ‘in its entirety, 11 for the ultimate question is not the functional or decorative aspect of each separate 12 feature, but the overall appearance of the article….’” See High Point Design LLC v. 13 Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013) (citing L.A. Gear, Inc. v. Thom 14 McCann Shoe Co., 988 F.2d 1117, 1123). 15 Plaintiff argues that Mr. Fletcher analyzed both the bag itself and the handles to 16 determine that the design of the’828 Patent is dictated by function. (Doc. No. 50 at 10.) 17 Moreover, he “testified that the overall bag appearance, i.e., their dimensions, are dictated 18 by the function of fitting inside in a shopping cart.” Id. Thus, Mr. Fletcher’s 19 functionality opinion is relevant and will certainly ‘assist the trier of fact’ as it ‘fits’ the 20 facts of this case, i.e., that it logically advances a material aspect of the Plaintiff’s case. 21 See Primiano v. Cook, 598 F.3d 558, 598 (9th Cir. 2010) (citing Daubert, 113 S. Ct. 22 2786.) 23 24 25

26 27 2 “Indeed, Mr. Fletcher testified that his opinion was limited to the functionality of those two specific elements and that he was not opining that the design as a whole was 28 1 In this case, while the Defendants’ assertions have some merit, the Court finds 2 them insufficient to justify excluding Mr. Fletcher’s opinions and conclusions on 3 functionality. The Defendants’ motion is DENIED on this point. 4 (4) Opinions Regarding the Obviousness of the ‘828 Patent 5 Finally, the Defendants argue that Mr. Fletcher’s obviousness opinion must be 6 excluded because it admittedly relies on misidentified and undisclosed prior art, thus 7 rendering those portions of his opinion unreliable. (Doc. No. 47 at 9.) Specifically, 8 Defendants assert that Mr. Fletcher’s “obviousness opinion is based on three 9 combinations of prior art: RCD ‘0001 as a primary reference with the ‘Deck’ design (the 10 ‘RCD 1-Deck combination’)” “RCD ‘0001 as a primary reference with RCD ‘0002 (the 11 ‘RCD1-RCD2 combination’)” and “Strom Embodiment 2 with RCD ‘0002 (the ‘Strom2- 12 RCD2 combination’)”. Id. As a result, Defendants contend that “Mr. Fletcher cannot 13 identify any basis in the factual record for his Strom1-RCD1 and Strom2-RCD2 14 combinations, his opinions based on those combinations must be excluded as unreliable.” 15 Id. at 10. 16 Plaintiff argues that Mr. Fletcher’s misidentification “is simply a clerical error that 17 he has corrected in the Fletcher Decl.”3 In fact, “the figures used in Mr. Fletcher’s 18 analysis have not changed – Mr. Fletcher simply labeled the figures as ‘RCD ‘0001’ 19 instead of ‘OHIM-0001.” (Doc. No. 50 at 8.) Furthermore, “the “OHIM-0001 reference 20 was certainly disclosed” to Defendants, “as they filed the document as an attachment to 21 their answer in this matter.” Id. 22 Here, the Court finds that the Defendants are challenging the Plaintiff’s clerical 23 error, while ignoring the surrounding context. To the extent Defendants desire to 24 challenge the factual basis for Mr. Fletcher’s opinion, or his conclusions, they may do so 25

26 27 3 “The figures used in Mr. Fletcher’s analysis have not changed – Mr. Fletcher simply labeled the figures as ‘RCD ‘0001’ instead of ‘OHIM-0001.’ Further, the OHIM- 28 1 on cross-examination. As of this time, the Court does not find his opinions or 2 conclusions fundamentally unsupported and DENIES Defendants’ motion. 3 B. Opinions Regarding Non-infringement of the Lotus Bags. 4 Defendants contend that Mr. Fletcher’s opinions and conclusions regarding 5 whether the Lotus Bags infringe the ‘828 Patent are excludable because Fletcher failed to 6 account for or consider both “similarities and dissimilarities” between the two bags. 7 (Doc. No. 47 at 14.) In fact, Defendants argue that, “Fletcher admits that he ‘did not 8 consider any similarities between the ‘828 Patent and [Golden Eye’s] bags.”4 Id. 9 Responding, Plaintiff argues that Defendants are merely “cherry-picking portions 10 of Mr. Fletcher’s testimony without considering the context surrounding the statements.” 11 (Doc. No. 50 at 12.) Moreover, Mr. Fletcher’s opinions and conclusions are based on 12 “reliable methodologies that satisfy the Rule 702 threshold,” and should not “be excluded 13 simply” because Defendants maintain an opposing position. Id. 14 The Court is unpersuaded by Defendants’ argument because when Mr. Fletcher’s 15 statement is viewed in context, it is not clear that his opinion is the product of an 16 incorrect legal standard. As such, the “jury [is] entitled to hear the expert testimony and 17 decide for itself what to accept or reject.” i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 18 831, 856 (Fed. Cir. 2010), aff’d, 564 U.S. 91 (2011). Therefore, the Court DENIES 19 Defendants’ motion to exclude on this point. 20 C. Opinions Regarding the Validity of the ‘912 Patent. 21 Finally, Defendants argue that Mr. Fletcher’s opinion (i.e., that the ‘912 Patent is 22 not obvious or anticipated) is not supported by an analysis of the obviousness or 23 anticipation of the ‘912 Patent under the legal standards discussed supra. (Doc. No. 47 at 24 15.) In this case, the Defendants have failed to provide sufficient information to enable 25 the Court to adequately determine whether it should exclude Mr. Fletcher’s opinions and 26

27 4 Defendants argue, “Mr. Fletcher’s analysis is contrary to controlling law and 28 1 conclusions regarding the validity of the ‘912 Patent. As such, the Court DENIES the 2 Defendants’ motion on this point. 3 II. PLAINTIFF’S MOTION TO EXCLUDE 4 A. Section VI of Laura Bjurstrom’s Initial Expert Report 5 Defendants’ retained Laura Bjurstrom as an expert to critique the opinions of 6 Plaintiff’s expert, Timothy Fletcher. In its motion to exclude, Plaintiff asserts that 7 Defendants are attempting to introduce infringement theories beyond that which were 8 included in their Infringement Contentions, by introducing them via Ms. Bjurstrom’s 9 expert report.5 (Doc. No. 48 at 1.) Despite Plaintiff’s request that Defendants amend 10 their Infringement Contentions, Defendants have not done so. See Id. Arguing that 11 Defendants seek to improperly introduce previously-undisclosed theories of infringement 12 through Ms. Bjurstrom’s expert report, Plaintiff seeks to exclude those portions that 13 discuss Version 3 of Plaintiff’s Lotus Bags. (Doc. No. 48 at 3.) 14 Defendants respond that Plaintiff’s motion is meritless because all of Plaintiff’s 15 Lotus Bags have always been at issue in this case.6 (Doc. No. 49 at 3.) The fact that 16 Defendants “properly identified Golden Eye’s Lotus Bags as the accused instrumentality 17 in its Disclosure of Preliminary Infringement” and “provided side-by-side images 18 showing how the Lotus Bags infringe the ‘828 Patent,” clearly signify that all versions of 19 Plaintiff’s Lotus Bags are pertinent to this suit. Id. The fact that Plaintiff now attempts 20 to parse its Lotus Bags products into separate ‘versions’ based on slight manufacturing 21 22

23 5 “[G]iven the purpose behind [these] disclosure requirements, a party may not use 24 an expert report to introduce new infringing instrumentalities not disclosed in the parties’ 25 infringement contentions.” Verinata Health, Inc. v. Sequenom, Inc. 2014 WL 4100638, at *3 (N.D. Cal. Aug. 20, 2014). (Doc. No. 48 at 1.) 26 6 Plaintiff says, “Golden Eye brought this lawsuit seeking a declaration that all of its 27 Lotus Bags do not infringe the ‘828 Patent, and Trolley Bags brought a patent infringement claim alleging that all of the Lotus Bags infringe the ‘828 Patent.” (Doc. 28 1 || change, has little relevance.’ See Id. In response to Plaintiffs motion, Defendants argue 2 || that the motion should be denied for the following reasons: (1) all of the Lotus Bags are 3 undisputedly at issue in the case; (2) Golden Eye does not move to exclude version three 4 || from Trolley Bags’ claims—only from Ms. Bjurstrom’s opinions; (3) Golden Eye was on 5 ||notice that all Lotus Bags were at issue; (4) any delay was entirely due to Golden Eye’s 6 || actions; and (5) Golden Eye does not identify any valid legal basis for exclusion. (See 7 || generally Doc. No. 59.) 8 On this issue, Plaintiff has argued little more than that Defendants failed to amend 9 || their Infringement Contentions, and that because of it, all mention of version three of its 10 || Lotus Bags should be excluded at trial. It is clear to this Court that the information 11 || Plaintiff seeks to exclude is not likely to mislead the jury or confuse the issues. Nor is it 12 || likely to substantially outweigh the probative value of Ms. Bjurstrom’s opinions and 13 |}conclusions. Accordingly, the Court DENIES Plaintiff's motion to exclude. 14 CONCLUSION 15 For the foregoing reasons, the Court ORDERS that: 16 (1) Defendants’ Motion to Exclude is DENIED; and 17 (2) Plaintiff's Motion to Exclude is DENIED. 18 IT IS SO ORDERED. 19 Dated: August 6, 2020 ( / 20 Hon. Roger T. Benitez 21 United States District Judge 22 23 24 || 26 |I7 “Golden Eye’s corporate representative testified that it was ‘always refining’ the 27 Lotus bags. According to Golden Eye, Golden Eye’s ‘version two’ added removable 28 rods, had sizing differences, and internal pockets. Golden Eye, however, does not seek to exclude Ms. Bjurstrom’s opinions related to versions one or two.” (Doc. No. 49 at 3.)