The opinion of the court was delivered by: Terrence F. McVerry United States District Court Judge
MEMORANDUM OPINION AND ORDER OF COURT
Presently before the Court for disposition is the MOTION TO DISQUALIFY SPECIAL MASTER FREDERICK H. COLEN filed by Sandvik Inc., Seco Tools Inc., and Sandvik Intellectual Property AB (collectively referred to as "Sandvik"), the RESPONSE filed by Kennametal Inc., the RESPONSE OF SPECIAL MASTER, and the REPLY filed by Sandvik. After a careful and deliberate review of the circumstances of this matter, the Court is satisfied that no reasonable person with knowledge of all of the surrounding facts and circumstances would conclude that the appearance of a lack of impartiality of the Special Master exists under the circumstances of this case. Therefore, the Motion will be denied.
Title 28, United States Code, § 455(a) provides as follows: "Any justice, judge, or magistrate judge of the United States shall disqualify himself in any proceeding in which his impartiality might reasonably be questioned." Because § 455(a) is intended to promote not only fairness to the litigants but also public confidence in the judiciary, a party seeking recusal need not demonstrate that the judge is actually biased, but rather that he or she would appear to be biased to "a reasonable person, with knowledge of all the facts." United States v. Wecht, 484 F.3d 194, 213 (3d Cir. 2007) (quoting In re Kensington Int'l Ltd., 353 F.3d 211, 220 (3d Cir. 2003)). A recusal motion must be based on "objective facts," not mere "possibilities" and "unsubstantiated allegations." United States v. Martorano, 866 F.2d 62, 68 (3d Cir. 1989). The United States Court of Appeals for the Third Circuit has stated that § 455(a) sets out an objective standard, one in which "a judge should recuse himself when a reasonable person, knowing all the acknowledged circumstances, might question the court's continued partiality." Alexander v. Primerica Holdings, Inc., 10 F.3d 155, 164 (3d Cir. 1993). "Impartiality and the appearance of impartiality in a judicial officer are the sine qua non of the American legal system" and "[a]ny tribunal permitted by law to try cases and controversies not only must be unbiased but also must avoid even the appearance of bias." Haines v. Liggett Group, Inc., 975 F.2d 81, 98 (3d Cir. 1992) (quoting Lewis v. Curtis, 671 F.2d 779, 789 (3d Cir. 1982)). As the United States Court of Appeals for the Second Circuit aptly described, the existence of the appearance of impropriety is to be determined not by considering what a straw poll of the only partly informed man-in-the street would show[,] but by examining the record facts and the law, and then deciding whether a reasonable person knowing and understanding all the relevant facts would recuse the judge.
United States v. Bayliss, 201 F.3d 116, 126-27 (2d Cir. 2000) (quoting In re Drexel Burnham Lambert, Inc., 861 F.2d 1307, 1313 (2d Cir. 1988)).
In light of this standard, it is relevant to the Court only whether the circumstances at issue would create in the mind of a reasonable person the appearance of a lack of impartiality on the part of the Special Master.
The legal relationship history between these parties is lengthy and contentious. Both parties are in the international business of manufacturing and selling metal cutting tools. Currently, the parties are involved in two pending lawsuits in this Court: Kennametal v. Sandvik, No. 09-cv-857 (referred to as the "PVD case"*fn1 ) and Sandvik v. Kennametal, No. 10-cv-00654 (referred to as the "CVD case."*fn2 ). In both cases, the Court appointed Frederick H. Colen, Esquire, an equity partner in the law firm of Reed Smith, LLP ("Reed Smith") as Special Master. On September 7, 2012, the Special Master notified counsel for Sandvik and Kennametal that he had just learned that a representative from Kennametal had requested that Reed Smith represent Kennametal in connection with a contractual dispute with a vendor / supplier of Kennametal. After the Special Master conducted further inquiry at the request of Sandvik, he also learned that since his appointment as Special Master in these cases, Reed Smith had represented Kennametal on a number of other unrelated legal matters. As a result of this disclosure, Sandvik now seeks under 28 U.S.C. § 455(a) to disqualify the Special Master in the PVD case and, to not only disqualify him in the CVD case, but also have the Court strike the Special Master's previously filed Report and Recommendation and vacate the Court's Memorandum Opinion and Order by which it had adopted the Report and Recommendation, as well as vacate the Court's September 13, 2012 Order which granted partial summary judgment to Kennametal on the issue of patent invalidity, all which have been issued and filed in the CVD case.
Sandvik initiated its CVD lawsuit against Kennametal on April 27, 2009, by the filing of a one-count Complaint in the United States District Court for the Western District of North Carolina, Asheville Division, in which it alleged that Kennametal infringed two patents, namely U.S. Patent Nos. 5,487,625 ("the '625 Patent) and 5,654,035 ("the '035 Patent").*fn3 Sandvik owns the '625 Patent, entitled "Oxide Coated Cutting Tool" and alleges that Kennametal has infringed Claims 1-7 of the Patent. By Order of May 12, 2010, the case was transferred pursuant to 28 U.S.C. § 1401(a) to the United States District Court for the Western District of Pennsylvania and assigned to this member of the Court.
On June 29, 2009, approximately two (2) months after the CVD lawsuit had been filed against it in North Carolina, Kennametal initiated the PVD lawsuit against Sandvik by the filing of a two-count complaint in this Court. Kennametal owns U.S. Patent No. 5,722,803 ("the '803 Patent"), entitled "Cutting Tool and Method of Making a Cutting Tool," and alleges that Sandvik has infringed the '803 Patent.
The parties and their counsel are very knowledgeable of the background facts relevant to the instant dispute. However, it is important to detail some of the history as to each case, as it differs slightly in each of the two cases.
Kennametal v. Sandvik (the PVD Case)
Civil Action No. 09-cv-00857
By Order of April 13, 2010, the Court encouraged counsel to confer and jointly recommend one (1) to three (3) qualified candidates for appointment as special master for claim construction. Counsel were advised that if they could not reach agreement, each side may separately recommend one (1) to three (3) qualified candidates. See Order, Document No. 49.
On April 30, 2010, the parties filed a Joint Submission of Special Master Candidate in which the parties jointly proposed that Frederick H. Colen, Esquire, of Reed Smith, Pittsburgh, PA, be appointed as Special Master. By Order of May 5, 2010, the Court appointed Attorney Colen as Special Master to serve throughout the claim construction process including, but not limited to, the Claim Construction Hearing with a Report and Recommendation to follow.
A Claim Construction hearing was conducted before the Special Master with the Court in presence on July 23, 2010. A Report and Recommendation was filed by the Special Master on September 28, 2010, in which the Special Master made a finding that Claim 9 of Kennametal Patent '803 was invalid for indefiniteness. See Document No. 84. After a de novo review, the Court adopted the Report and Recommendation as the opinion of the Court. See Memorandum Order, Nov. 10, 2010 (Document No. 89).
On October 6, 2010, Attorney William P. Quinn, Jr., of the Philadelphia law firm of Morgan Lewis & Bockius, entered his appearance as attorney for Sandvik in both the PVD and CVD cases. Unbeknowst to the Court, Sandvik had notified Kennametal a day earlier that Attorney Quinn's wife was a lawyer at Reed Smith, but stated that she did not work with Special Master Colen. Kennametal was not informed that Mrs. Quinn was a partner in the same intellectual property department as the Special Master or that both Mrs. Quinn and the Special Master had each served as head of the intellectual property group at Reed Smith. See Kennametal's Response (Doc. 151) at 3. Mrs. Quinn apparently works in the Philadelphia office of Reed Smith, while Special Master Colen works in the Pittsburgh office. See www.reedsmith.com.
On August 12, 2011, Sandvik moved for additional claim construction briefing and hearing on terms found in claims 24-26 and 30-39 of the '803 Patent. The Court granted the request, the parties briefed the issue, and a Supplemental Claim Construction hearing was again conducted before the Special Master with the Court in presence on June 6, 2012. Although the construction of a number of terms in Claims 24-26 and 30-39 of the '803 Patent had originally been in dispute by the parties, only the construction of a single term remained in dispute by the time of the June 6, 2012 Supplemental Claim Construction hearing. See Amended Supplemental Joint Disputed Claim Terms Chart (Document No. 132). The Special Master has not yet issued a Report and Recommendation as to the Supplemental Claim Construction.*fn4
On September 7, 2012, Special Master Colen disclosed to counsel for the parties that he had recently learned that Kennametal had retained Reed Smith to represent it in a contract dispute with a vendor that did not involve Sandvik. After a number of e-mail exchanges between the Special Master and counsel for the parties with regard to the representation of Kennametal by Reed Smith lawyers, all of which are discussed infra, on October 15, 2012, Sandvik filed the instant motion in which it seeks to disqualify Special Master Colen from continuing to serve as Special Master in both the PVD and CVD cases and requests that in the CVD case only, the Court (i) strike the February 16, 2012 Report and Recommendation filed by the Special Master in the CVD case, (ii) vacate the Memorandum Opinion and Order of July 24, 2012, which adopted that Report and Recommendation, and (iii) vacate the September 13, 2012 Order which granted partial summary judgment in favor of Kennametal.
Interestingly, Sandvik has not requested that the Report and Recommendation in the PVD case, filed by the Special Master on July 23, 2010, in which he recommended a result favorable to Sandvik (i.e., that Claim 9 of the Kennametal Patent '803 be declared invalid for indefiniteness), be stricken or that the November 10, 2010, Opinion of the Court, which adopted that Report and Recommendation, be vacated.
Sandvik v. Kennametal (the CVD Case)
Civil Action No. 10-cv-00654
As stated above, the CVD case was transferred to this Court on May 12, 2010, from the United States District Court for the Western District of North Carolina, Asheville Division.
By Order of October 1, 2010, the parties were to recommend a Special Master to the Court by October 15, 2010. See Document No. 93. Because the parties were not able to agree on a Special Master candidate, each party provided their respective recommendations to the Court. See Submission of Special Master Candidates (Document No. 99).
Sandvik recommended two candidates: John K. Williamson, Esquire, of the law firm of K&L Gates LLP, and retired United States District Court Judge Donald E. Ziegler. Kennametal recommended only one candidate: Frederick H. Colen, Esquire. Unbeknownst to the Court, on October 19, 2010, Kennametal had informed Sandvik that it objected to the possible appointment of Attorney Williamson because his law firm had been counsel for the plaintiff in an unrelated copyright infringement suit in which Kennametal was providing indemnity to the defendant and had 9been the subject of extensive discovery by K&L Gates attorneys.*fn5 See Document No. 151, Exhibit C (Case No. 09-cv-857). Sandvik responded to Kennametal's objection as follows:
Mr. Williamson has had no personal involvement in the Gilliani Consulting, Inc. v. Ferguson Enterprises, Inc. suit referenced in your e-mail. Rather, we understand that matter is being handled by K&L Gates lawyers from Seattle; as you know Mr. Williamson is located in Pittsburgh. While we appreciate you bringing this matter to our attention, we do not consider this matter to be a conflict, imputed or otherwise, as Mr. Williamson is a proposed neutral in our matter. Accordingly, we do not believe the Gilliani case impacts in any way Mr. Williamson's potential service as Special Master, should Judge McVerry choose to select him.
Finally, we note that Mr. Williamson is plainly not biased against Kennametal, having served as a Special Master in a prior lawsuit and delivering a Recommendation and Report that was very favorable to Kennametal on the issues in that case.
Although the Court was not aware of Kennametal's concerns regarding Attorney Williamson, it selected Attorney Colen as the Special Master primarily because the parties had previously jointly recommended him to serve as Special Master in the PVD case and his familiarization with both parties, counsel, and their businesses could be of expeditious benefit to all. By Order of November 30, 2010, the Court appointed Attorney Colen as Special Master to serve throughout the claim construction process including, but not limited to a Claim Construction Hearing with a Report and Recommendation to follow.
On June 9, 2011, the Special Master and the Court conducted a telephone conference with counsel for the parties to discuss various issues in advance of the Claim Construction hearing which was scheduled on June 13, 2011.
On June 13, 2011 and June 14, 2011, a Claim Construction hearing was held before both the Special Master and the Court. The Court was present and attentive throughout the entire two day hearing.
On February 16, 2012, the Special Master issued an extensive Report and Recommendation in which he recommended that the Court hold that the '625 Patent is invalid for indefiniteness under 35 U.S.C. § 112. After considering Sandvik's objections to the Report and Recommendation, with briefing from both sides, followed by an in-depth de novo review of the record evidence, the Court issued a twenty-three (23) page Memorandum Opinion and Order on July 24, 2012 in which it adopted in its entirety the claim construction recommended by the Special Master in his Report and Recommendation.
Based on the findings in the Report and Recommendation and the Memorandum Opinion and Order, Kennametal filed a Motion for Partial Summary Judgment. On September 13, 2012, the Court granted Kennametal's motion as to invalidity of the '625 Patent and left for future resolution Kennametal's affirmative defenses and counterclaims of unenforceability due to unclean hands, as well as Kennametal's contention that this is an exceptional case under 35 U.S.C. § 285 which may entitle Kennametal to recovery of its attorney's fees and costs.
As discussed above (and as will be discussed in greater detail below) on September 7, 2012, the Special Master notified counsel via email that Kennametal had requested Reed Smith to represent it in connection with an unrelated matter which did not involve Sandvik. Thereafter a number of email exchanges ensued between the Special Master and counsel for the parties. It was during this time period that the Special Master also learned for the first time that Reed Smith had represented Kennametal on a number of non-patent unrelated legal matters since his appointment as Special Master in these patent proceedings.
On October 15, 2012, Sandvik filed its motion to disqualify the Special Master in which it requests that: (i) the Special Master be disqualified in both the PVD and CVD cases; (ii) the Report and Recommendation filed in the CVD case by the Special Master on February 16, 2012 be stricken; (iii) the Memorandum Opinion and Order of July 24, 2012, which adopted the Report and Recommendation, be vacated; and (iv) the Order of Court of September 13, 2012 which granted partial summary on the issue of invalidity be vacated. Curiously, Sandvik has not requested that the July 23, 2010, Report and Recommendation filed by the Special Master in the PVD case be stricken or that the November 10, 2010 Opinion of the Court, which adopted that Report and Recommendation, be vacated.
Communication from the Special Master to Counsel for the Parties
The Special Master is an equity partner at Reed Smith and has practiced in the intellectual property section of the firm for over thirty-three (33) years. He graduated from Emory University Law School in 1975. Upon graduation from law school, the Special Master worked for four (4) years at Bayer Corporation (Mobay Corporation) as a Staff Intellectual Property Attorney. In 1979, he joined Reed Smith, where he has practiced intellectual property law continually since. At one time, he served as the Deputy Head and Head of the firm's Intellectual Property Group. The Special Master is admitted to practice before the U.S. Patent and Trademark Office, the United States Supreme Court, the United States Court of Appeals for the Third Circuit, the United States Court of Appeals for the Federal Circuit, the United States District Court for the Western District of Pennsylvania, and the state courts of the Commonwealth of Pennsylvania and the State of Georgia.
Special Master Colen is highly respected and knowledgeable in the
intellectual property field. He has been recognized as a Super Lawyer
in the Super Lawyers Magazine on a number of occasions.*fn6
Moreover, he is an esteemed member of the bar of ...