Viva Healthcare Packaging USA Inc. v. CTL Packaging USA Inc.

Decision Date11 July 2016
Docket NumberDOCKET NO. 3:13-cv-00569-MOC-DSC
CourtU.S. District Court — Western District of North Carolina
Parties VIVA HEALTHCARE PACKAGING USA INC., Viva Healthcare Packaging HK Ltd, and Viva Healthcare Packaging Ltd, Plaintiffs, v. CTL PACKAGING USA INC., and Tuboplast Hispania, Defendants.

Anthony T. Lathrop, Moore & Van Allen, Charlotte, NC, Kripa Raman, Michael Francis Milea, Sana Chaudhry, Catherine Nyarady, Michael Wu, Paul, Weiss, Rifkind, Wharton & Garrison LLP, New York, NY, Damon C. Andrews, Paul, Weiss, Rifkind, Wharton & Garrison LLP, Washington, DC, for Plaintiffs.

Barry J. Herman, Kara Lacy Boyle, Womble Carlyle Sandridge & Rice, LLP, Baltimore, MD, Carl Bruce Massey, Jr., Womble Carlyle Sandridge & Rice, LLP, Winston-Salem, NC, Christine Holleman Dupriest, Womble Carlyle Sandridge & Rice, LLP, Washington, DC, Kurt E. Lindquist, II, Russ Ferguson, Womble Carlyle Sandridge & Rice, LLP, Charlotte, NC, David R. Boaz, Womble Carlyle Sandridge & Rice LLP, Raleigh, NC, for Defendants.


Max O. Cogburn Jr., United States District Judge

THIS MATTER is before the court on several Motions of the parties. This patent infringement action relates to two patents—U.S. Patent Nos. 8,518,318 ("the '318 Patent"') and 6,547,094 ("the '094 Patent"'), which both pertain to methods of manufacturing flexible plastic tubes and other thin-walled tubular containers. Plaintiffs Viva Healthcare Packaging, Ltd., Viva Healthcare Packaging (HK) Ltd., and Viva Healthcare Packaging (USA) Inc., (collectively, "Viva" or "Plainitffs") have alleged that Defendants CTL Packaging USA, Inc., and Tuboplast Hispania (collectively, "CTL" or "Defendants") infringed these two patents; Defendants have asserted several defenses to the infringement allegations. The court issued a Claim Construction Order on March 23, 2015. After discovery was complete, the parties filed the following Motions, which have been fully briefed and are ripe for review:

1. Defendants' Motion for Summary Judgment as to Indefiniteness (#178);
2. Defendants' Motion for Summary Judgment as to Lack of Enablement (#180);
3. Defendants' Motion for Summary Judgment of No Willful Infringement (#182);
4. Plaintiffs' Motion for Partial Summary Judgment of No Anticipation of United States Patent No. 6,547,094 (#196) ;
5. Plaintiffs' Motion for Partial Summary Judgment of No Anticipation Of United States Patent No. 8,518,318 (#198) ;
6. Defendants' Motion to Exclude Certain Opinions by Expert Witness Stephen Driscoll (#184);
7. Defendants' Motion to Exclude Certain Testimony of Expert Dr. Michael Rubinstein (#186);
8. Plaintiffs' Motion to Exclude Certain Purported Expert Testimony of Tim Osswald and Mukerrem Cakmak (#190);
9. Plaintiffs' Motion to Exclude Purported Expert Testimony of Cynthia Smith (#203); and
10. Plaintiffs' Motion to Exclude Purported Expert Testimony of Cynthia Smith and Tim Osswald (#208).

The court heard oral arguments on these motions on May 4, 2016. Having considered the Motions, the applicable law, and the arguments of counsel, the court enters the following findings, conclusions, and Order.


This is an action for patent infringement relating to U.S. Patent Nos. 8,518,318 ("the ‘318 Patent’ ") and 6,547,094 ("the ‘094 Patent ’ ") (collectively, the "patents-in-suit"). Plaintiffs have alleged that Defendants infringed these two patents, which both pertain to methods of manufacturing flexible plastic tubes and other thin-walled tubular containers used in the cosmetics industry. The manufacture of these tubes is done through a process called "injection molding," which involves heating up plastic and injecting it into a mold to cool and harden. Injection molding is a common method used in plastics manufacturing for three-dimensional objects. Injection-molded tubes are typically more durable and flexible in shape, nozzle, cap, and label than predecessor technologies.

Viva contends that injection molding was not a viable option for the manufacture of thin-walled tubes before the technology covered by the patents-in-suit was developed because it was difficult to find polymers with the appropriate properties. The patents-in-suit purportedly identify physical blends of polymers that can be used in injection molding to make flexible, thin-walled plastic objects with the requisite properties to protect the cosmetics that they encase, such as crack-resistance and an ability to withstand handling. The '094 Patent teaches that blends of polymers with certain environmental stress cracking resistance ("ESCR") values, particularly those with at least one polymer with certain melt flow properties, can be effectively and feasibly used in injection molding-based manufacturing processes to make these flexible, thin-walled plastic objects. The '318 Patent claims to improve on these findings by adding that the polymer blends benefit from containing "compatible" polymers, with at least one of such polymers having a high melt flow index. According to Viva, the patented methodology made it easier and cheaper to develop flexible, thin-walled plastic tubes through injection molding, which has allowed for more variety in tube shape, texture, and embossment.

After the issue had been fully briefed and argued in court at a hearing, the court entered a Claim Construction Order (#109) construing the disputed terms in this case. Now that discovery has been completed, the parties have filed an array of Motions for Summary Judgment and Motions to Exclude proffered expert testimony, largely as such opinions have bearing on the parties' arguments on summary judgment. The court will address each motion in turn.


The parties have both filed Motions seeking to exclude testimony from experts in this case. Plaintiffs seek to exclude certain expert testimony offered by Tim Osswald, Mukerrem Cakmak, and Cynthia Smith. See(##190, 203, 208). Defendants seek to exclude certain opinions of Professor Stephen Driscoll and Dr. Michael Rubinstein. See(##184, 186). The court will address each Motion seriatim.

A. Legal Standards

The legal standards governing the parties' Motions to exclude expert testimony are as follows. Fed. R. Evid. 702 provides:

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.

Id. The Supreme Court's decision in Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993) clarified "that it is the duty of the trial court to perform the gatekeeping function with respect to expert testimony: ‘the trial judge must ensure that any and all scientific testimony or evidence admitted is not only relevant, but reliable.’ " United States v. Prince–Oyibo, 320 F.3d 494, 498 (4th Cir.2003) (quoting Daubert, 509 U.S. at 589, 113 S.Ct. 2786 ). In assessing the reliability of expert testimony, a court should consider:

(1) whether the particular scientific theory can be (and has been) tested; (2) whether the theory has been subjected to peer review and publication; (3) the known or potential rate of error; (4) the existence and maintenance of standards controlling the technique's operation; and (5) whether the technique has achieved general acceptance in the relevant scientific or expert community.

United States v. Crisp, 324 F.3d 261, 266 (4th Cir.2003) (quoting Daubert, 509 U.S. at 593–94, 113 S.Ct. 2786 ) (quotation marks omitted). This list of factors is not exhaustive. Id. The test for relevance, or "fit," considers "whether expert testimony proffered in the case is sufficiently tied to the facts of the case that it will aid the jury in resolving a factual dispute." Daubert, 509 U.S. at 591, 113 S.Ct. 2786. Similarly, "scientific validity for one purpose is not necessarily scientific validity for other, unrelated purposes." Id.

While the proponent of expert testimony must establish its admissibility by a preponderance of proof, see Cooper v. Smith & Nephew, Inc., 259 F.3d 194, 199 (4th Cir.2001), "the test for exclusion [of an expert] is a strict one, and the purported expert must have neither satisfactory knowledge, skill, experience, training nor education on the issue for which the opinion is proffered." (Thomas J. Kline, Inc. v. Lorillard, Inc., 878 F.2d 791, 799 (4th Cir.1989) ). Of particular relevance in this patent case, "[o]ne knowledgeable about a particular subject need not be precisely informed about all details of the issues raised in order to offer an opinion." Id.(citing Martin v. Fleissner GMBH, 741 F.2d 61, 64 (4th Cir.1984) ). "In short, Daubert requires that a trial court give broad consideration to all of the various factors that may illuminate the reliability of proffered expert testimony." United States v. Prince – Oyibo, 320 F.3d 494, 498 (4th Cir.2003).

Fed. R. Evid. 703 provides:

An expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed. If experts in the particular field would reasonably rely on those kinds of facts or data in forming an opinion on the subject, they need not be admissible for the opinion to be admitted. But if the facts or data would otherwise be inadmissible, the proponent of the opinion may disclose them to the jury only if their probative value in helping the jury evaluate the opinion substantially outweighs their prejudicial effect.

Id. As the Federal Circuit recently summarized,

Under these rules, a district court may exclude evidence that is based upon unreliable principles or methods, legally insufficient facts and

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