United States District Court, D. Utah
THORNE RESEARCH, INC. and SOFTGEL FORMULATORS, INC., Plaintiffs,
MEMORANDUM DECISION AND ORDER DENYING PLAINTIFFS'
MOTION IN LIMINE TO EXCLUDE OPINION REGARDING MICROSOFT
matter is before the Court on Plaintiffs' Motion In
Limine to Exclude Opinion Regarding Usage of Microsoft
Access Database. Plaintiffs Thorne Research, Inc. and Softgel
Formulators, Inc. (collectively “Thorne”) are
seeking to exclude Xymogen from arguing, producing evidence,
or “eliciting testimony from Dr. Glenn D. Prestwich
regarding the usage of a Microsoft Access database for
scientific research (such as that used by the inventor of the
‘888 Patent), and whether such usage is standard or
acceptable practice.” For the following reasons, the
Court denies the Motion.
STANDARD OF REVIEW
determining whether expert testimony is admissible, the
district court generally must first determine whether the
expert is qualified ‘by knowledge, skill, experience,
training, or education' to render an
opinion.” “[W]here such testimony's
factual basis, data, principles, methods, or their
application are called sufficiently into question . . . the
trial judge must determine whether the testimony has a
reliable basis in the knowledge and experience of the
expert report, Dr. Prestwich states that he is “not
familiar with the use of a Microsoft Access database to
record experiments.” Dr. Prestwich opines that “it
would have been quite unusual for a research scientist
engaged in potentially novel, non-obvious, and useful
discoveries that would characterize an invention to use such
a system.” This opinion is based on Dr.
Prestwich's belief that “such a system could be
more vulnerable to tampering that would not be possible in a
hardbound, handwritten laboratory
notebook.” Dr. Prestwich states that “it was
the accepted and common practice to maintain a hardbound (not
spiral bound) notebook with handwritten entries in ink in
order to verify authenticity of results and
timelines.” Dr. Prestwich bases this conclusion on his
experience at universities and the private
seeks to exclude this testimony on a number of grounds.
First, Thorne argues that this testimony is not relevant.
However, as Xyomgen correctly points out, testimony on this
subject is directly relevant to its claim that the ‘888
Patent is invalid.
next argues that Dr. Prestwich is not qualified to opine on
the use of a Microsoft Access database for research purposes.
The Court disagrees. Dr. Prestwich is sufficiently qualified,
based on his training and experience, to testify about
standard laboratory notebook procedures and whether the use
of a Microsoft Access database comports with standard
next argues that this testimony should be excluded because it
lacks a sufficient basis. For substantially the same reasons
already stated, the Court disagrees. Dr. Prestwich's
report clearly identifies the basis for his opinions.
Thorne argues that such testimony will unduly prejudice the
jury. Thorne is concerned that “the jury may
erroneously rely on Dr. Prestwich's testimony as a
suggestion of tampering of the inventive
documents. Thorne s concern is moderated by Dr.
Prestwich s deposition testimony where he states that he has
no evidence that the Microsoft Access database at issue was
tampered with. Thus, there is no risk of undue
that Plaintiffs' Motion In Limine to Exclude
Opinion Regarding Usage of Microsoft Access ...