UHS of Delaware, Inc. v. United Health Services, Inc.
1:12-cv-00485
M.D. Penn.May 10, 2017Background
- UHS of Delaware, Inc. (UHS Delaware) moved in limine to exclude trademark expert Gary Krugman, retained by United Health Services (UHS defendants).
- The dispute concerns which portions of Krugman’s trademark-law testimony are admissible at the upcoming bench trial on likelihood-of-confusion issues.
- The court applied Federal Rule of Evidence 702 and the Daubert/Paoli/Schneider trilogy: qualification, reliability, and fit.
- The court found Krugman qualified and his methodology reliable; UHS Delaware did not challenge those points.
- The court limited admissibility based on relevance/fitness for a bench trial: allowed testimony on how a crowded market and policing (or failure to police) affect mark strength; excluded testimony about USPTO examination practice and the legal meaning/implications of an “incontestable” designation.
- The court also rejected the untimeliness objection to the motion in limine, finding no need for a Daubert hearing and that the motion was timely.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Krugman is qualified to testify as a trademark expert | Krugman is not sufficiently qualified (implicitly challenged) | Krugman is qualified based on credentials and experience | Qualified — court found Krugman well-qualified |
| Whether Krugman’s methods and opinions are reliable under Rule 702 | Methods/opinions unreliable (UHS Delaware did not press a reliability challenge) | Report grounded in sound methodology and reliably applied | Reliable — court found methodology sound |
| Whether Krugman’s testimony is a proper fit (relevant and helpful) for the bench trial | Much of testimony (USPTO practice; incontestable status) not relevant or helpful and may mislead | Testimony helps understanding of trademark background for jury | Split: testimony about crowded market and policing admissible; USPTO procedure and incontestable-status testimony excluded |
| Whether motion in limine was timely | Motion untimely under court’s case-management order | Motion timely because accelerated deadline applies only to motions requiring a Daubert hearing | Timely — no Daubert hearing required; motion allowed to proceed |
Key Cases Cited
- Daubert v. Merrell Dow Pharms., 509 U.S. 579 (establishing trial-court gatekeeping standard for expert admissibility)
- In re Paoli R.R. Yard PCB Litig., 35 F.3d 717 (3d Cir.) (articulating expert-admissibility factors and application)
- Schneider ex rel. Estate of Schneider v. Fried, 320 F.3d 396 (3d Cir.) (describing trilogy of qualification, reliability, and fit)
- Waldorf v. Shuta, 142 F.3d 601 (3d Cir.) (requiring liberal interpretation of qualification requirement)
- Pineda v. Ford Motor Co., 520 F.3d 237 (3d Cir.) (noting Rule 702’s permissive admissibility policy)
- Kannankeril v. Terminix Int’l, Inc., 128 F.3d 802 (3d Cir.) (discussing liberal admission under Rule 702)
- Suter v. Gen. Accident Ins. Co. of Am., 424 F. Supp. 2d 781 (D.N.J.) (noting Rule 403 concerns are diminished in bench trials)