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May 18, 2005.


The opinion of the court was delivered by: YVETTE KANE, District Judge


On May 24, 2005, this Court will commence a Markman hearing in the above-captioned litigation to construe claims 11, 12, 13, 15, and 16 of U.S. Patent number 6,092,450 (the "'450 patent") that Plaintiffs allege are being infringed by one of Defendant's products. In connection with that hearing, Defendant seeks to exclude proposed testimony from Plaintiffs' purported expert, Thomas J. Nikolai, a patent attorney, and from Adrian Battison, a Canadian patent agent who helped prosecute the '450 patent. Defendant further seeks to exclude introduction of three of Plaintiffs' product brochures during the Markman hearing. (Doc. Nos. 93, 95, and 97.)

I. Discussion

  It is well established that a court may, "in its discretion, receive extrinsic evidence in order to `aid the court in coming to a correct conclusion' as to the `true meaning of the language employed' in the patent." Markman v. Westview Inst., Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (quotation omitted). Such extrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises. Id. The Federal Circuit has held that extrinsic evidence:
may be helpful to explain scientific principles, the meaning of technical terms, and terms of art that appear in the patent and prosecution history. Extrinsic evidence may demonstrate the state of the prior art at the time of the invention. It is useful "to show what was then old, to distinguish what was new, and to aid the court in the construction of the patent."
Id. (quoting Brown v. Piper, 91 U.S. 37, 41 (1875)). However, extrinsic evidence is not to be used for the purpose of varying or contradicting the terms of the claims. Id. at 981 (citations omitted).

  A. Proposed Expert Testimony of Thomas J. Nikolai

  Plaintiffs have proposed to offer expert witness testimony from attorney Thomas J. Nikolai during the Markman hearing. A shareholder in the Minneapolis law firm of Nikolai and Mesereau, P.A., Mr. Nikolai has been a practicing patent attorney since 1962, and has familiarity in "all aspects" of intellectual property law. (Doc. No. 98, Ex. B.) Mr. Nikolai acknowledges that he "do[es] not purport to be a person of ordinary skill in the design and construction of sheet material cutting machines of they type involved [in this litigation]." Id. However, Nikolai claims "over 45 years of experience in reading and interpreting patent claims" and, in his opinion, Plaintiffs' proposed claim construction constitute a proper interpretation of the recited claim elements at issue in this case.

  Defendant has moved to exclude Mr. Nikolai's testimony for three reasons. First, Defendant argues that Mr. Nikolai has conceded that the '450 patent should be construed according to its intrinsic evidence, and that the Court would be wrong to rely on any expert testimony in its construction of the '450 patent's claims, including his own. (Doc. No. 98, Ex. B, Dep. of Thomas J. Nikolai, at 142-45.) Second, Defendant asserts that Mr. Nikolai's proposed testimony is nothing more than a claim construction argument by an attorney, and is not properly considered expert testimony on claim construction. Third, Defendant claims that even if Mr. Nikolai could offer cognizable expert testimony, his expert report fails to meet the standards of Federal Rule of Civil Procedure 26(a)(2)(B) because the report does not set forth each of Mr. Nikolai's purported opinions and the support therefor. Moreover, Defendant asserts that Mr. Nikolai has indicated his intention to offer legal argument on certain issues not mentioned in his report, and that such opinion testimony should be excluded pursuant to Rule 26(a)(2)(B). Finally, Defendant seeks to exclude all exhibits marked during Mr. Nikolai's deposition because the exhibits have no relevance to this dispute outside of the context of Mr. Nikolai's deposition.

  In response, Plaintiffs note that the Court has discretion to consider expert testimony of a patent lawyer in the context of a Markman hearing, and that the Court may hear extrinsic evidence (including expert testimony) to aid the Court in understanding the patent at issue. Plaintiffs assert that Mr. Nikolai is qualified due to his extensive experience in the areas of patents and patent law. Plaintiffs also claim that Defendant's efforts to exclude Mr. Nikolai's testimony is inconsistent with its claim that the Court should consider extrinsic evidence during the Markman hearing because Defendant contends certain claim elements of the '450 patent are ambiguous. Plaintiffs argue that Mr. Nikolai's proposed testimony is not merely legal argument, but instead regards Plaintiffs' proposed claim construction of the '450 patent. Therefore, according to Plaintiffs, it "should be obvious that Mr. Nikolai's opinion, based on more than four decades of reading and interpreting patent claims, could be useful to the Court at the Markman hearing." (Doc. No. 103, at 13.) Plaintiffs' complain that Defendant's arguments against allowing Mr. Nikolai's testimony "constitute little more than ad hominem attacks on Mr. Nikolai." (Id. at 14.) Plaintiffs assert that Mr. Nikolai's report satisfies the standards set forth in Rule 26(a)(2)(B) and that he is not expected to testify beyond the scope of his report. Finally, Plaintiffs submit that the Court should defer ruling on Defendant's request that the exhibits marked at Mr. Nikolai's deposition be excluded until the Markman hearing.

  The admission of expert witness testimony is governed by Federal Rule of Evidence 702, which provides that:
If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.
Fed.R. Evid. 702 (2005); see also Daubert v. Merrell Dow Pharms, Inc., 509 U.S. 579 (1993); Utah Med. Prods., Inc. v. Graphic Controls Corp., 350 F.3d 1376, 1385 (Fed. Cir. 2003). District courts are required to perform a "gatekeeper" function and exclude unreliable or unhelpful expert testimony. Daubert, 509 U.S. at 589. Courts must exercise this responsibility in all areas of expert testimony, including witnesses offered as experts in patent suits. Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 147 (1999); Herbert v. Lisle Corp., 99 F.3d 1109, 1117 (Fed. Cir. 1996).

  In exercising its gatekeeper responsibility, the Court focuses on "the trilogy of restrictions on expert testimony: qualification, reliability, and fit." Calhoun v. Yamaha Motor Corp., U.S.A., 350 F.3d 316, 321 (3d Cir. 2003) (quoting Schneider v. Fried, 320 F.3d 396, 405 (3d Cir. 2003)). As an initial matter, the Court must determine that the proposed expert has "specialized expertise" in a relevant field. Id. (citation omitted). Second, the proposed expert's testimony must be reliable, and not based upon belief or speculation. Daubert, 509 U.S. at 590. Finally, the proposed testimony must "fit" the issue before the Court; in other words, the testimony "must be relevant for the purposes of the case and assist the trier of fact." Calhoun, 350 F.3d at 321 (citation omitted).

  Plaintiffs contend that Mr. Nikolai should be deemed qualified as an expert in this case due to his extensive experience with patents and patent law. On the basis of his education and legal experience, Plaintiffs assert that "Mr. Nikolai clearly has the requisite level of `knowledge, experience, training [and] education' to qualify as an expert in the area of patent law under Fed.R. Evid. P. 702." (Doc. No. 103, at 9.) Defendant counters that Mr. Nikolai is not qualified to testify as an expert in this case, and points to Mr. Nikolai's admission that he does not claim to be a person of ordinary skill in the art relevant to this litigation:
While I do not purport to be a person of ordinary skill in the design and construction of sheet material cutting systems of the type involved here, I do have over 45 years of experience in reading and interpreting patent claims, and based upon this experience, it is my opinion that the proposed construction offered by the Plaintiffs . . . constitute a proper interpretation of the recited claim elements.
(Doc. No. 98, Ex. A at 7.)

  As noted above, the Court has wide discretion in determining whether to admit expert testimony. However, the Court notes the Federal Circuit's holding that "extrinsic evidence including expert testimony is not to be relied upon for purposes of claim interpretation, other than to aid the judge in understanding the technology." EMI Group N. Am., Inc., v. Intel Corp., 157 F.3d 887, 892 (Fed. Cir. 1998) (emphasis added). Such evidence is to be used "only [as] `an aid to the court in coming to a correct conclusion as to the true meaning of the language employed in the patent.'" Id. (quoting Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 n. 3 (Fed. Cir. 1998) (en banc).

  On the basis of the parties' submissions, the Court does not find that Mr. Nikolai's intended testimony is designed to assist the Court in its efforts to comprehend the various technical and scientific questions that will be presented during the Markman hearing that may be beyond the Court's experience; rather, Mr. Nikolai's expert testimony would appear to relate almost entirely to the legal issue of claim construction. Although Mr. Nikolai clearly has an extensive familiarity with patent law, the Court does not find that his proposed testimony in this case is either appropriate or necessary. Despite Plaintiffs' insistence that Mr. Nikolai's proposed testimony is more than mere legal argument, the Court finds that the proposed testimony amounts to little more than a legal affirmation of Vidir's own claim construction analysis. During the Markman hearing in this case, Plaintiffs' counsel will be able to make the very arguments and legal conclusions that are set forth in the proffered expert report and the Court believes it would be inappropriate for Mr. Nikolai to offer his asserted expert testimony to bolster such a legal conclusion. See Endress Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) ("this court has on numerous occasions noted the impropriety of patent lawyers testifying as expert witnesses and giving their opinion regarding the proper interpretation of a claim as a matter of law").

  For the foregoing reasons, the Court will grant Defendant's motion to exclude Mr. Nikolai's expert ...

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