United States District Court, W.D. Pennsylvania
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 ...