Inkit, Inc. v. airSlate, Inc.

CourtDistrict Court, D. Delaware
DecidedMarch 20, 2025
Docket1:23-cv-00793
StatusUnknown

This text of Inkit, Inc. v. airSlate, Inc. (Inkit, Inc. v. airSlate, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Inkit, Inc. v. airSlate, Inc., (D. Del. 2025).

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

INKIT, INC., Plaintiff, Civil Action No. 23-793-RGA Vv. AIRSLATE, INC., Defendant.

MEMORANDUM OPINION Gabriela Monasterio, Travis Steven Hunter, Jason James Rawnsley, RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE; Sarah Theresa Andrade, BAYARD, P.A., Wilmington, DE; Charles Brandon Browning, H. William Bloom, III, MAYNARD NEXSEN PC, Birmingham, AL, Attorneys for Plaintiff. Mary Claire McCudden, MARSHALL DENNEHEY, PC, Wilmington, DE; Gregor Hensrude, Petra N. Ambrose, KLINEDINST PC, Seattle, WA; Kevin Gramling, KLINEDINST PC, Irvine, CA, Attorneys for Defendant.

March a0 , 2025

Before me are Defendant airSlate’s Daubert motions to exclude the testimony of two of Plaintiff Inkit’s experts, Mr. Glenn Newman and Dr. Justin Anderson. (D.I. 156, 159). Ihave reviewed the parties’ briefing. (D.J. 157, 160, 164, 167, 173, 175). For the reasons set forth below, Defendant’s Daubert motion to exclude the testimony of Mr. Newman is DENIED. Defendant’s Daubert motion to exclude the testimony of Dr. Anderson is GRANTED in part and DENIED in part. I. BACKGROUND Inkit filed the instant suit on July 21, 2023. (D.I. 1). After recently dropping its Lanham Act claim, Inkit now alleges four counts—three state law claims that are similar to various provisions of the Lanham Act, and a breach of contract claim. (D.I. 2 at 13-16; see D.J. 194 at 3 of 25). Previously, on March 2, 2023, Inkit sued airSlate for improper use of Inkit’s trademarks in advertisements. (D.I. 103-1 at 5-8); see Inkit, Inc. v. airSlate, Inc., No. 23-cv-00232 (D. Del. Mar. 2, 2023), D.I. 1. The parties settled the earlier case. The settlement agreement states, “airSlate shall not use or publicly display or cause others to use or publicly display” Inkit’s trademark “in any form or manner, including without limitation in airSlate’s web-based or other advertising, that infringes upon or otherwise violates Inkit’s rights in the Mark[.]” (D.I. 3 at 2 of 6, § 2(a)). Inkit brought the instant suit based on airSlate’s continued display of the word “inkit” on seven of airSlate’s webpages. (D.I. 2 at 4-11). On these webpages, Inkit’s trademark appears alongside the trademark DocuSign.' (/d. at 4] 19). The webpages advertise airSlate’s signNow product as an alternative to “inkit (Docusign).” (/d. at 5-11).

1 The owner of the DocuSign trademark, DocuSign, Inc., is not involved in this case.

airSlate now moves to exclude the testimony of two of Inkit’s experts, Glenn Newman and Dr. Justin Anderson, under Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). (D.I. 156; D.I. 159). II. LEGAL STANDARD Federal Rule of Evidence 702 sets out the requirements for expert witness testimony and states: A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if the proponent demonstrates to the court that it is more likely than not that: (a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert’s opinion reflects a reliable application of the principles and methods to the facts of the case. R. Evip. 702. The Third Circuit has explained: Rule 702 embodies a trilogy of restrictions on expert testimony: qualification, reliability and fit. Qualification refers to the requirement that the witness possess specialized expertise. We have interpreted this requirement liberally, holding that “a broad range of knowledge, skills, and training qualify an expert.” Secondly, the testimony must be reliable; it “must be based on the ‘methods and procedures of science’ rather than on ‘subjective belief or unsupported speculation’; the expert must have ‘good grounds’ for his o[r] her belief. In sum, Daubert holds that an inquiry into the reliability of scientific evidence under Rule 702 requires a determination as to its scientific validity.” Finally, Rule 702 requires that the expert testimony must fit the issues in the case. In other words, the expert’s testimony must be relevant for the purposes of the case and must assist the trier of fact. The Supreme Court explained in Daubert that “Rule 702’s ‘helpfulness’ standard requires a valid scientific connection to the pertinent inquiry as a precondition to admissibility.” Schneider ex rel. Estate of Schneider v. Fried, 320 F.3d 396, 404-05 (3d Cir. 2003) (footnote and internal citations omitted).”

? The Court of Appeals wrote under an earlier version of Rule 702. Subsequent amendments do not alter the applicability of the quoted discussion.

Ili. DISCUSSION Mr. Newman provided an opinion solely about Inkit’s potential recovery in the form of disgorgement. (D.I. 158-4 at 12 of 31 432). Dr. Anderson designed a survey to measure consumer confusion about the relationship between Inkit and DocuSign caused by airSlate’s webpages. (D.I. 161-3 at 4 of 320 3-5). airSlate does not dispute the “qualification” of either Mr. Newman or Dr. Anderson but rather focuses on the “reliability” and “fit” of their respective expert opinions. See Schneider, 320 F.3d at 404. “[I]n order for expert testimony to be reliable, and therefore admissible, it must be based on the methods and procedures of science rather than subjective belief or speculation.” In re TMI Litig., 193 F.3d 613, 670 (3d Cir. 1999), amended by 199 F.3d 158 (3d Cir. 2000). “The test of admissibility is not whether a particular scientific opinion has the best foundation, or even whether the opinion is supported by best methodology or unassailable research. Instead, the court looks to whether the expert’s testimony is supported by ‘good grounds.’” Karlo v. Pittsburgh Glass Works, LLC, 849 F.3d 61, 81 (3d Cir. 2017) (citing Jn re TMI Litig., 193 F.3d at 665). For expert testimony to “fit the issues in the case,” the testimony “must be relevant for the purposes of the case and must assist the trier of fact.” Schneider, 320 F.3d at 404. A. Mr. Glenn Newman On the question of reliability, airSlate raises a number of complaints about Mr. Newman’s expert report, largely concerning items airSlate alleges he did not sufficiently address or review. airSlate claims Mr. Newman did not perform a “proper investigation” because, first, he thought the seven webpages were “examples of purported infringing activity” instead of the totality of that activity, and second, he did not review the deposition testimony of Inkit’s Rule

30(b)(6) representative.? (D.I. 157 at 3; D.J. 158-1 at 10, 12-13 of 88). airSlate’s remaining contentions deal with Mr. Newman’s failure to deduct costs from airSlate’s revenues or to apportion airSlate’s revenue earned solely due to unlawful activity when determining disgorgement. (D.I. 157 at 3—8, 11-16). For example, Mr. Newman reviewed a sample of Google Analytics user data for the webpages purportedly showing there were “no conversions* for all visits to the Seven Webpages,” but declined to rely upon the user data for his opinion. (/d. at 6; D.I. 158-1 at 59 of 88; D.J. 158-5 at 4 of 91, Ex. F). airSlate also contends Mr.

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Inkit, Inc. v. airSlate, Inc., Counsel Stack Legal Research, https://law.counselstack.com/opinion/inkit-inc-v-airslate-inc-ded-2025.