Court – United States District Court for the Western District of Tennessee, Western Division Jurisdiction – Federal Case Name – ECIMOS vs. Carrier Corp. Citation – 2018 U.S. Dist. LEXIS 122059
This case involves ECIMOS, a manufacturing execution system software developed and owned by the plaintiff, ECIMOS, LLC for appliance manufacturers. The plaintiff sued Carrier Corp., an appliance manufacturer with a license to the software, alleging that the defendant began developing its own version of the proprietary software—licensed to it by ECI, the plaintiff’s predecessor—by reverse-engineering the software, and that in doing so, the defendant disseminated confidential information to unauthorized users. The plaintiff asserted its claims for breach of the software licensing agreement, misappropriation of trade secrets, conversion, violation of the Digital Millennium Copyright Act, and violation of the Copyright Act.
The defendant denied these allegations and alleged that plaintiff’s claims were brought in bad faith. The defendant also alleged that it was the plaintiff who breached a service contract.
The Software Expert Witnesses
The plaintiff submitted a report from its software expert witness, James M. Chenault, which was prepared with the assistance of William Jeff Carr, a database expert. In this report, Chenault opined that the defendant’s RES software, which was prepared using the LabVIEW programming language, interfaced with the defendant’s underlying database “in a very generic fashion,” querying the database for the particular tests to be performed. Chenault further stated, however, that similarities between the defendant’s and the plaintiff’s databases “led to the conclusion that the defendant’s current database was a direct descendant of the plaintiff’s database.”
The defendant moved to exclude, arguing that Chenault was only a LabVIEW expert, not a database expert. The defendant further claimed that Carr, who was purportedly a database expert, “had very minimal input into the opinions stated by Chenault in his expert report.” The court refused to accept this argument since Chenault was not offering an expert opinion on databases. Rather, he was offering his expert opinion as a data analyst on the data contained in the databases.
The defendant argued for the complete disqualification of Chenault and Carr as expert witnesses in this matter. It was suggested that they were not qualified opine on the use of the sysname command or clean room design as it pertained to software because neither had the requisite education, experience, or understanding of these two matters prior to being hired by the plaintiff. The plaintiff responded that Chenault had an understanding of the concept of clean room design within the context of chemistry and electronics, and did not need to be an expert in clean room design as it relates to software to understand and offer his expert opinion on the concepts and principles of clean room design.
Held
The court found this response by the plaintiff to be inadequate. While the court decided to not exclude any testimony at the time of ruling on the motion, it held that the plaintiff would need to explain why clean room design was similar across the disciplines of chemistry, electronics, and software before Chenault would be permitted to testify about clean room design as it pertained to software.
With respect to the sysname command, the court held that it would not exclude Chenault’s or Carr’s testimony because a software expert need not be previously familiar with every single command about which he offers testimony. Prior familiarity with the relevant software language is sufficient.
Based on the above, the motions to exclude the testimony of the plaintiff’s software expert witnesses were denied.
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