United States District Court, W.D. Pennsylvania
January 28, 2015
FORTA CORPORATION, Plaintiff,
SURFACE-TECH, LLC; JAS COMPANY, LLC; and JOE STURTEVANT, Defendants
For JOHN MCILVAINE, Special Master: John W. McIlvaine, III, LEAD ATTORNEY, The Webb Law Firm, Pittsburgh, PA.
For FORTA CORPORATION, Plaintiff, Counter Defendant: Wendy West Feinstein, LEAD ATTORNEY, Eckert, Seamans, Cherin & Mellott; John D. Ostrander, PRO HAC VICE, Elliott, Ostrander & Preston, P.C., Portland, OR; Thomas Sanchez, Eckert Seamans Cherin & Mellott, LLC, Pittsburgh, PA.
For SURFACE-TECH, LLC, JAS COMPANY, LLC, JOE STURTEVANT, Defendants: Anthony S. Volpe, LEAD ATTORNEY, PRO HAC VICE, Volpe and Koenig, P.C., Philadelphia, PA; Rebecca Sember Izsak, Cipriani & Werner, Pittsburgh, PA; Ryan W. O'Donnell, Thomas P. Gushue, PRO HAC VICE, Volpe and Koenig, P.C., Philadelphia, PA.
For JAS COMPANY, LLC, SURFACE-TECH, LLC, JOE STURTEVANT, Counter Claimants: Anthony S. Volpe, LEAD ATTORNEY, Ryan W. O'Donnell, Thomas P. Gushue, Volpe and Koenig, P.C., Philadelphia, PA; Rebecca Sember Izsak, Cipriani & Werner, Pittsburgh, PA.
John W. McIlvaine, Special Master. Judge Nora Barry Fischer.
SPECIAL MASTER'S REPORT AND RECOMMENDATION ON DEFENDANTS' MOTION TO STRIKE
John W. McIlvaine,
Special Master. Judge
For the reasons stated below, it is respectfully recommended that Defendants' motion to strike (ECF No. 89) be granted in part and denied in part. Specifically, to the extent that Defendants seek to exclude portions of Plaintiff's expert's testimony from the claim construction hearing of November 12, 2014, as well as Hearing Exhibits 6 and 8, it is respectfully recommended that their motion be denied. To the extent that Defendants seek to file rebuttal evidence with respect to the same, see (ECF No. 90 at 10), it is respectfully recommended that their motion be granted.
A. Procedural Background
The current cause of action is one for infringement of United States Patent Nos. 8, 114, 514 (" the '514 Patent"), and 8, 142, 889 (" the '889 Patent"). Plaintiff/Counterclaim Defendant Forta Corporation, Inc. (hereafter " Forta" or " Plaintiff") filed its initial complaint on November 7, 2013, (ECF No. 1 at 12) and a second amended complaint on December 12, 2013. (ECF No. 13 at 1). Defendants/Counterclaim Plaintiffs Surface Tech LLC, JAS Company, LLC, and Joe Sturtevant (collectively " Defendants") timely filed their answer and counterclaims on April 16, 2014. (ECF No. 40). Plaintiff answered Defendants' counterclaims on May 7, 2014. (ECF No. 48).
Pursuant to Rule 4.2 of the Local Patent Rules (" LPR"), the parties submitted a joint disputed claims chart identifying 12 disputed terms from each patent-in-suit. (ECF No. 73).
On September 26, 2014, Plaintiff submitted its opening claim construction brief and identification of extrinsic evidence, pursuant to LPR 4.3. (ECF Nos. 75 and 76). Attached to the opening brief was the affidavit of Tara Y. Meyer, Ph.D. (ECF No. 75-17). While the affidavit made reference to Dr. Meyer's " attached curriculum vitae[, ]" id. ¶ 1, it is undisputed that no such document actually was included therewith.
Defendants filed their responsive claim construction brief and identification of extrinsic evidence on October 17, 2014. (ECF Nos. 78 and 79). Attached to the brief was the affidavit of Defendants' own expert, Martin I. Jacobs, Ph.D., (ECF No. 78-12) as well as a copy of Dr. Jacobs' curriculum vitae . (ECF No. 78-13).
Plaintiff filed its reply brief and identification of additional extrinsic evidence on October 31, 2014. (ECF Nos. 80 and 81). Defendants submitted their sur-reply brief and identification of additional extrinsic evidence on November 7, 2014. (ECF Nos. 83 and 84). Attached to their sur-reply brief was a supplemental affidavit made by Dr. Jacobs. (ECF No. 83-1).
A Markman hearing was held on November 12, 2014, at which the undersigned served as the Special Master. See (ECF No. 61). At 7:39 p.m. on November 11, 2014, Plaintiff for the first time produced a copy of Dr. Myer's curriculum vitae . See (ECF No. 91-1). Plaintiff asserts that the omission of Dr. Meyer's CV was unintentional. Id. Dr. Meyers' CV was not entered onto the record until the Markman hearing itself. See Hr'g Ex. 6.
During the course of the hearing both parties presented testimony from their respective experts. Portions of Dr. Meyer's testimony appeared to be responsive to Dr. Jacobs' affidavits. Defendants objected to these portions of Dr. Meyer's testimony, (ECF No. 89-3), as well as to a graph that she drew during the hearing itself. See Hr'g Ex. 8; see also (ECF No. 89-5).
Following the hearing, the Court ordered the parties to contact the undersigned regarding whether they intended to file supplemental briefing on the objections placed on the record during the Markman hearing. (ECF No. 86). After doing so, the parties filed a joint motion for the issuance of a briefing schedule by the Court. (ECF No. 87). Defendants also requested that, in the event that their objections were overruled, they be allowed to submit additional evidence in response to the above items. The Court issued a briefing schedule on December 17, 2014, and this matter was referred to the undersigned to prepare a report and recommendation on the asserted issues. (ECF No. 88).
Defendants filed the present Motion To Strike Certain Portions Of Plaintiff's Expert Testimony And Hearing Exhibits Presented At The November 12, 2014 Claim Construction Hearing, and supporting brief, on December 23, 2014. (ECF Nos. 89 and 90). Plaintiff timely responded in opposition thereto. (ECF No. 91). With leave of court, Defendants timely submitted a reply brief. (ECF No. 93). This issue is fully briefed and ripe for disposition.
B. Legal Standard
Defendants contend that the introduction of the above evidence at issue violates the Court's scheduling order of June 4, 2014 (ECF No. 57), LPR 4.3, and Rule 26(a)(2)(B) of the Federal Rules of Civil Procedure. (ECF No. 90 at 2). In support of their assertion that the Court may exclude the above-referenced evidence, Defendants rely on Rule 37(c)(1) of the Federal Rules of Civil Procedure, as well as the Court's inherent authority under Rule 16(f)(1)(c). (ECF No. 90 at 2).
There is a dispute among the parties as to applicability of Rule 26 expert witness disclosure requirements to experts presented to testify at Markman hearings. However, it is beyond dispute that LPR 4.3 controls the information required to be included in the affidavit of any witness -- lay or expert -- that will testify at a Markman hearing in this district.
The purpose of the local patent rules of the Western District of Pennsylvania is to " advance the litigation in a timely and efficient manner and make it less expensive." Copper Innovs. Grp., LLC v. Nintendo Co., No. 07-1752, 2012 WL 628465, at *2 (W.D. Pa. Feb. 27, 2012). Despite the application of the local patent rules in this dispute, " [e]videntiary rulings do not generally raise issues unique to patent law." Honeywell Int'l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 994 (Fed. Cir. 2007). Thus, the precedent of the Court of Appeals for the Third Circuit -- and not that of the Federal Circuit -- controls. Id.
LPR 4.3 states in pertinent part that the party filing the opening claim construction brief:
[w]ith respect to any . . . witness, lay or expert . . . shall also serve and file an affidavit signed by the witness that sets forth the substance of that witness' proposed testimony sufficient for the opposing party to conduct meaningful examination of the witness(es).
With respect to replies: " [n]ot later than fourteen (14) days after service of the Response, the opening party may serve and file a Reply directly rebutting the opposing party's Response." Id.
Contrast this with the portion of Rule 26 cited by Defendants as support for " striking" the evidence at issue.
(B) Witnesses Who Must Provide a Written Report .
Unless otherwise stipulated or ordered by the court, this disclosure must
be accompanied by a written report -- prepared and signed by the witness -- if
the witness is one retained or specially employed to provide expert testimony
in the case or one whose duties as the party's employee regularly involve
giving expert testimony. The report must contain:
(i) a complete statement of all opinions the witness will express and the basis and reasons for them;
(ii) the facts or data considered by the witness in forming them;
(iii) any exhibits that will be used to summarize or support them;
(iv) the witness's qualifications, including a list of all publications authored in the previous 10 years;
(v) a list of all other cases in which, during the previous 4 years, the witness testified as an expert at trial or by deposition; and
(vi) a statement of the compensation to be paid for the study and testimony in the case.
Fed. R. Civ. P. 26(a)(2)(B). Moreover, the requirement of a report under Rule 26(a)(2)(B) is explicitly contemplated to apply to witnesses who may testify at trial. Fed.R.Civ.P. 26(a)(2)(A).
The parties have cited to no case law that requires witness affidavits submitted under LPR 4.3 to conform to the requirements of Rule 26, and the undersigned was unable to locate any in the course of independent research. Additionally, when the language of the two Rules is compared, the differences between the two are clear. As such, the undersigned concludes that Rule 26 does not govern the witness affidavit requirement of LPR 4.3. Cf. Wonderland Nurserygoods Co. v. Thorley Indus., LLC, No. 12-195, 2013 WL 2471801, at *2 (W.D. Pa. June 7, 2013) (holding that the contentions required by the LPRs are an extension of notice pleadings, and did not implicate Rule 26). Thus, the proper basis for the present motion is Rule 16.
Rule 16(f) states, in pertinent part:
(1) In General. On motion or on its own, the court may issue any just orders, including those authorized by Rule 37(b)(2)(A)(ii)-(vii) if a party or its attorney:
(C) fails to obey a scheduling or other pretrial order.
Fed. R. Civ. P. 16(f) (emphasis added).
Because the sanctions sought by Defendants sound in Rule 37, and Rule 16(f) authorizes the remedies available under Rule 37(b)(2)(A)(ii)-(vii), the undersigned concludes that the analysis of whether to exclude evidence under Rule 37 applied by the courts of the Third Circuit is appropriate to resolve the present motion. See, e.g., Vehicle IP, LLC v. Werner Enters., Inc., No. 10-503-SLR, 2013 WL 4786119, at *1 (D. Del. Sep. 9, 2013) (applying the same standard to resolve a dispute that arose under Rules 16(f) and 37).
The decision to exclude evidence under Rule 37 is committed to the sound discretion of the trial court. See, e.g., In re Paoli R.R. Yard PCB Litig., 35 F.3d 717, 791 (3d Cir. 1994) (citing Semper v. Santos, 845 F.2d 1233, 1237 (3d Cir. 1988)). In order to determine whether exclusion is appropriate for the failure of a party to comply with pretrial orders, a court should consider the following factors:
1) prejudice or surprise to the opposing party; 2) the ability of the opposing party to cure the prejudice; 3) the disruption of the orderly and efficient trial of the case; 4) bad faith or willfulness; and 5) the importance of the evidence.
In re Zoloft (Sertraline Hydrochloride) Prods. Liab. Litig., No. 12-MD-2342, 2015 WL 115486, at *1 and n.9 (E.D. Pa. Jan. 7, 2015) (citing ZF Meritor, LLC v. Eaton Corp., 696 F.3d 254, 298 (3d Cir. 2012)); see also Konstantopoulos v. Westvaco Corp., 112 F.3d 710, 719 (3d Cir. 1997).
As this Court has recognized " a showing of prejudice is required to grant any relief, and prejudice will likely not be found if the party is held to have had sufficient notice of the argument." Wonderland, No. No. 12-196, 2013 WL 2471801, at * 3 (internal quotes and citation omitted). Additionally, the importance of the excluded testimony should be considered. Konstantopoulos, 112 F.3d at 719 (internal quotes and citation omitted). Finally, as the exclusion of " critical evidence is an 'extreme' sanction, " it normally should not be imposed " absent a showing of willful deception or flagrant disregard of a court order by the proponent of the evidence." Id. (internal quotes and citations omitted).
The orders that Plaintiff ostensibly violated by presenting Dr. Meyer's testimony and filing her CV late -- and thus implicating Rule 16(f) -- were the initial patent scheduling order (ECF No. 35), and the amended patent scheduling order of June 4, 2014, (ECF No. 57). See (ECF No. 90 at 1-2). The former states that " this action is placed under the Local Patent Rules of this Court for pretrial proceedings and all provisions of these Rules will be strictly enforced." (ECF No. 35 at 1). The latter states, in pertinent part that " The Opening Party may serve a reply directly rebutting the opposing party's Response, and any objections to extrinsic evidence by October 31, 2014" . (ECF No. 57 ¶ 9).
Defendants seek to have " stricken" various specific portions of Dr. Meyer's testimony, spanning between pages 99-118 of the Hearing Transcript, as well Hearing Exhibits 6 and 8, which include her CV and a graph that she drew at the hearing, respectively. See (ECF Nos. 90 at 1; 89-3 -- 89-5).
The first portion of Dr. Meyer's testimony to which Defendants object relates to her professional background and, by extension, her CV. (ECF No. 89-3 at 3-4). The second relates to Dr. Meyer's analysis of Defendants' proposed construction of the claim terms " polyolefin, " " polyethelene, " and " polypropylene, " some opinions expressed by Dr. Jacobs in his affidavits that relate thereto, the graph at Exhibit 8, and the phase-state of various polymers at different temperatures. Id. at 8-13. This portion of testimony was made, at least in part, in response to a question asked by the undersigned. Id. at 11-13.
The third and fourth include further analysis of Dr. Jacobs' affidavits. Id. 16-18. The fifth includes more of the same, as well as Dr. Meyer's opinion of the phase-state of waxes. Id. at 19. The final passage includes Dr. Meyer's opinion whether polyolefins, polyethylene and polypropylene must have a carbon chain of at least 500 atoms. Id. at 22.
The application of the factors set forth in Part II.B, supra, to this evidence is set forth below:
1. Prejudice or surprise to the opposing party
While LPR 4.3 does not require the extensive disclosure of an expert report under Rule 26(a)(2)(B), it does require that the opposing party be provided with " the substance of that witness' proposed testimony sufficient . . . to conduct meaningful examination. . . ." LPR 4.3.
Dr. Meyer's twelve-paragraph affidavit may be characterized fairly as containing more in the way of conclusions than citation to underlying authority. That said, except for Dr. Meyer's testimony regarding the phase-state of a wax -- which was made at least in part in response to a question posed by the Special Master -- her testimony falls within a fair reading of her affidavit. Additionally, given the nature of the dispute between the parties regarding the relevant terms, it should not have been surprising to either party that the testimony of one expert would bleed into the subject matter of the affidavit of the other.
Similarly, Defendants' expert conceded during the hearing that the graph at Hearing Exhibit 8 is similar -- albeit with one " critical difference" -- to the graph included in his own affidavit. Hr'g Tr. at 146-147; (ECF No. 78-12 ¶ 36). It also is worth noting that this graph was taken from the text cited by Dr. Meyers in her affidavit. Compare (ECF No. 89-5) with (ECF No. 78-12 ¶ 36 and n.1) (" Ex. 4 is taken from the textbook relied on at par. 6 of the Meyer Affidavit."); see also (ECF No. 89-6 ¶ 6 and n. 1).
As to Dr. Meyer's CV (ECF No. 89-4), it is undisputed that it was not provided to Defendants until, at the earliest, roughly 13 hours before the November 12, 2014 Markman hearing. To the extent that they wished to question Dr. Meyer regarding the information included in her CV, it appears, on its face, that Defendants suffered at least some prejudice due to the late hour of its disclosure. See (ECF No. 90 at 5-6). That said, it also is apparent that whatever prejudice they suffered was not the result of unfair surprise. Indeed, Dr. Meyer's affidavit explicitly referenced an attached curriculum vitae, (ECF No. 89-4) ¶ 1, and that affidavit -- without the referenced CV -- was in their possession for more than six weeks prior to the Markman hearing. There is no evidence that Defendants ever objected to the missing CV prior to the hearing, and they explicitly refrained from objecting at the hearing itself when Plaintiff introduced the CV into evidence. See Hr'g Tr. at 95:20 -- 96:6.
In the end, it appears that whatever prejudice suffered by Defendants at the hands of Dr. Meyer was minimal.
2. The ability of the opposing party to cure the prejudice
Defendants were granted a recess during the Markman hearing in order to discuss Dr. Meyer's testimony with their own expert. Additionally, as stated below, their request to present additional evidence appears to be unopposed by Plaintiff, and thus should be granted. As such, Defendants have the ability to cure whatever prejudice they have suffered.
3. The disruption of the orderly and efficient trial of the case
The undersigned can see no potential for disruption of this case -- beyond what already has occurred as a result of this motion -- by allowing the evidence at issue to remain on the record.
4. Bad faith or willfulness
While Dr. Meyer's LPR 4.3 witness affidavit is brief in comparison to her own testimony, it is difficult to characterize it as made in bad faith. Most of her testimony at issue falls within the scope of the affidavit to the extent that it exists for the purpose of providing Defendants with " the substance of [her] proposed testimony sufficient . . . to conduct meaningful examination. . . ." LPR 4.3. Her digression into the subject of the phase-state of waxes also was at least in part a response to a question posed by the Special Master.
As to Dr. Meyer's CV, it appears from the contents of the affidavit that it inadvertently was omitted. (ECF No. 75-17 ¶ 1) (" My background, training and other credentials are described in the attached curriculum vitae."). These facts do not give rise to the inference of bad faith or willful disregard of the orders of the Court.
5. The importance of the evidence
Dr. Meyer's testimony goes right to the heart of the Plaintiff's proposed construction of several terms of the patents-in-suit. The same could be said of the graph at Hearing Exhibit 8. While Dr. Meyer's CV is not important substantively to the issue of claim construction, it provides important information with respect to the weight that the Court should apply to her opinion as an expert. There can be little doubt that all of the evidence at issue is important.
Based on the application of these factors to the evidence at issue, the undersigned concludes that the evidence at issue in the present motion should not be excluded.
D. The submission of additional evidence
Despite the facts that Defendants ask for leave to supplement their expert disclosures in the event that the Court denies their motion to strike, see, e.g., (ECF Nos. 87 ¶ 10; 90 at 10), and this Court explicitly has directed the undersigned to address that issue, (ECF No. 88 ¶ 3), Plaintiff presented no position on the matter in its briefing. In light of its silence, the undersigned concludes that Plaintiff does not oppose Defendants' request, and thus respectfully recommends that it be granted. Additionally, a supplemental report will afford Defendants the ability to cure whatever prejudice it has suffered due to Dr. Meyer's testimony and the inclusion of Exhibits 6 and 8 on the record. Cf. Competitive Tech. v. Fujitsu Ltd., 286 F.Supp.2d 1161, 1169 (N.D. Cal. 2003) (allowance of a party to present sworn testimony addressing six patents untimely disclosed a month earlier provided party the opportunity to cure any prejudice it had suffered).
For the reasons stated above, to the extent that Defendants seek to exclude portions of Plaintiff's expert's testimony from the claim construction hearing of November 12, 2014, as well as Exhibits 6 and 8 thereto, it is respectfully recommended that their motion be denied. To the extent that Defendants seek to file supplemental expert evidence with respect to the same, it is respectfully recommended that their motion be granted, and that they be allowed to submit evidence directly rebutting the testimony and exhibits addressed above within ten days of the issuance of an order by the Court on this issue.
The parties are reminded of their obligations to file objections to this report within the time-frame set forth by the Court. Failure to timely file objections may constitute a waiver of appellate rights. Cf. Brightwell v. Lehman, 637 F.3d 187, 193, n.7 (3d Cir. 2011).