The opinion of the court was delivered by: William W. Caldwell United States District Judge
Presently pending before the court is a motion (Doc. 621) filed by Plaintiff and Counterclaim Defendants Kimberly-Clark Worldwide, Inc., Kimberly-Clark Corporation, and Kimberly Clark Global Sales, LLC (collectively, "KC") to strike a "supplemental" expert report served by Defendants First Quality Baby Products, LLC, First Quality Products, Inc., First Quality Retail Services, LLC, and First Quality Hygienic, Inc. (collectively, "FQ") pursuant to Rule 37(c)(1) of the Federal Rules of Civil Procedure. Also pending before the court is a cross-motion (Doc. 624) in which FQ seeks to strike the rebuttal report prepared by KC's expert. The parties have fully briefed both motions, which are now ripe for the court's review. After careful consideration, we will grant KC's motion and deny FQ's motion.
Although the parties are familiar with the background of this case, we will set forth a brief summary of the context from which the expert reports at issue emerge. Both reports relate to FQ's claim that the Rajala patents are invalid.
The court required the parties to submit expert reports for issues on which they bear the burden of proof on or before June 15, 2012. On that date, FQ served an expert report, prepared by its expert, Mr. Gardner, regarding the alleged invalidity of the Rajala Patents. This report relied only on the Suzuki Patent as alleged prior art. On August 17, 2012, the due date for rebuttal expert reports, KC served a rebuttal report prepared by its expert, Ms. Balogh, in which Ms. Balogh opined that Suzuki was not prior art. On August 30, 2012, FQ served a "supplemental" expert report prepared by Mr. Gardner, wherein Mr. Gardner set forth a new opinion that the Igaue Patent invalided the Rajala claims, as they were asserted by Ms. Balogh. FQ had not previously articulated this theory of invalidity.
On September 5, 2012, KC moved to strike Mr. Gardner's supplemental report. KC contends that the new invalidity defense contained in Mr. Gardner's report is untimely and highly prejudicial to KC. KC asks the court to strike this new defense.*fn1 Under an expedited briefing schedule ordered by the court, FQ filed a brief in opposition to KC's motion on September 19, 2012. At the same time, FQ filed a cross-motion to strike portions of Ms. Balogh's rebuttal report. According to FQ, Ms. Balogh's report contained new information which precipitated Mr. Gardner's supplemental report. FQ argues that Mr. Gardner's report is therefore "substantially justified," that KC is not prejudiced, and that the court should not strike Mr. Gardner's report under Rule 37(c). In the alternative, however, FQ argues that if any expert opinion should be stricken, it should be Ms. Balogh's, not Mr. Gardner's.
Rule 37(c)(1) of the Federal Rules of Civil Procedure provides that "[i]f a party fails to provide information or identify a witness as required by Rule 26(a) or (e)," the court may sanction that party, typically by prohibiting it from relying on the undisclosed information or witness, "unless the failure was substantially justified or is harmless." In deciding whether this sanction is warranted, we consider the following factors: "(1) the prejudice or surprise in fact of the party against whom the excluded witnesses would have testified, (2) the ability of that party to cure the prejudice, (3) the extent to which waiver of the rule against calling unlisted witnesses would disrupt the orderly and efficient trial of the case or of other cases in the court, and (4) bad faith or willfulness in failing to comply with the court's order[,]" and we also consider the importance of the testimony at issue. Meyers v. Pennypack Woods Home Ownership Ass'n, 559 F.2d 894, 904-05 (3d Cir. 1977), overruled on other grounds by Goodman v. Lukens Steel Co., 777 F.2d 113 (3d Cir. 1985).
As noted above, KC asks the court to strike the new invalidity defense
contained in Mr. Gardner's supplemental report under Rule 37(c), but FQ argues that new defense is "substantially justified" as a necessary response to new evidence and opinions offered in Ms. Balogh's rebuttal report. Specifically, FQ points to a new reduction-to-practice date for the invention of the Rajala Patents, raised for the first time in Ms. Balogh's report, and new claim constructions.
With regard to the reduction-to-practice date, FQ's argument can be summarized as follows. KC previously stated, in response to an interrogatory, that the reduction-to-practice date was "no later than August, September, or October 1993." However, Ms. Balogh's report opined that the reduction-to-practice date was "no later than April 29, 1994." FQ also contends that Ms. Balogh's report introduced previously unidentified witnesses and documents to support this new date.
In response, KC disputes that new witnesses or documents were introduced by Ms. Balogh. KC insists that all documents upon which Ms. Balogh relied were produced to FQ during fact discovery, and that the three so-called "new witnesses" were identified in a deposition exhibit. In addition, as a more general matter, KC points out that the import of both reduction-to-practice time frames is the same-under either one, the invention of the Rajala Patents was reduced to ...