Loggerhead Tools, LLC v. Sears Holdings Corp., No. 12-CV-9033, Slip Op. (N.D. Ill. Sep. 20, 2016) (Darrah, J.).

Judge Darrah granted in part plaintiff Loggerhead’s motion to exclude defendant Apex’s expert’s opinions regarding willfulness and obviousness in this IP case involving the Bionic Wrench.

Of note, the Court held as follows:

  • The expert’s testimony on willfulness was excluded because it would not have been helpful to the jury. There was no reason that jurors could not evaluate the evidence to determine whether defendants’ behavior was “willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or – indeed – characteristic of a pirate” per the Supreme Court’s willfulness standard in Halo.
  • Furthermore, the expert lacked any qualification that differentiated him from a lay juror in terms of understanding defendants’ state of mind.
  • The expert’s obviousness opinions were sufficient. To the extent that they addressed each claim, but not each element of each claim, it was still sufficient, based upon the Supreme Court’s caution that obviousness analysis be “expansive and flexible.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,420 (2007).
  • The expert’s reason or motivation to combine prior art references was insufficient to the extent that it only said the pieces of prior art were in the same field. Where the expert provided more than that, however, he sufficiently detailed a motivation to combine. Of course, Loggerhead could always argue the weight of the proposed motivation to combine.