IEP Technologies, LLC v. KPM Analytics, Incorporated et al. (D. Mass. 21-cv-10417).

IEP sued KPM for federal and common law trademark infringement and unfair competition and violation of c. 93A in connection with alleged infringement of IEP’s  “hexagonal shape” trademarks for explosion containment and detection equipment.  The case has already involved several disputes regarding the admissibility of expert testimony.  That trend continued, with KPM moving to exclude opinion testimony from IEP’s damages expert.  Judge Kobick granted and denied the motion, each in part.  She denied the motion with respect to the proposed disgorgement of profits opinion, finding that IEP must prove actual harm, that the parties’ products directly compete (which can be loosened if fraud or palming off is demonstrated), and/or the conduct of the defendant supports an unjust enrichment or deterrence theory that negates the requirement of actual harm, but that the damages expert is not himself required to testify as to these factors for his opinion to be admissible.

Judge Kobick granted the motion with respect to proposed testimony on reasonable royalties, finding that the expert’s opinion was not ascertained with reasonable certainty because it did not rely on a reliable methodology.  The expert relied on five licenses in determining his proposed royalty, but did not explain how any of the licenses were factually comparable to the circumstances of the case – indeed, the expert testified that the five licenses were not related to the facts of the case.  The expert further failed to identify the methodology by which he arrived at an initial rate or on what basis he opted to increase the rate.  Accordingly, his testimony on reasonable royalty rates was excluded.