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Forta Corporation v. Surface-Tech, LLC

United States District Court, W.D. Pennsylvania

March 5, 2015





In this action, Plaintiff, Forta Corporation (hereinafter "Forta"), has sued Defendants, Surface-Tech, LLC, JAS Company, and Joe Sturtevant (collectively "Defendants"), for infringement of United States Patent Nos. 8, 114, 514 and 8, 142, 889. The Court held a Technology Tutorial and Claim Construction Hearing (hereinafter the " Markman Hearing") on November 12, 2014, with Special Master John W. McIlvaine, III, Esq., presiding.

In preparation for the Markman Hearing, and pursuant to Rule 4.2 of the Local Patent Rules (hereinafter "LPR"), the parties submitted a joint disputed claims chart, identifying twelve disputed terms from each patent-in-suit, on September 12, 2014. (Docket No. 73). On September 26, 2014, Plaintiff submitted its opening claim construction brief and identification of extrinsic evidence, pursuant to LPR 4.3. (Docket Nos. 75, 76). Attached to this opening brief was the affidavit of Tara Y. Meyer, Ph.D. (Docket No. 75-17). While this affidavit references Dr. Meyer's "attached curriculum vitae[, ]" ("CV") it is undisputed that same was not actually attached.

Defendants filed a responsive claim construction brief and identification of extrinsic evidence, including the affidavit and CV of Defendants' expert, Martin I. Jacobs, Ph.D. (Docket Nos. 78, 78-12, 79). Plaintiff filed a reply brief and identification of additional extrinsic evidence, which did not include a supplemental affidavit of Dr. Meyer. (Docket Nos. 80, 81). Thereafter, Defendants submitted their sur-reply brief and identification of extrinsic evidence, which did include a supplemental affidavit of Dr. Jacobs. (Docket Nos. 83, 83-1, 84).

The Markman Hearing occurred on November 12, 2014. At 7:39 p.m. on November 11, 2014, Plaintiff produced to Defendants, via email, a copy of Dr. Meyer's CV for the first time. (Docket No. 91-1). Dr. Meyer's CV was not entered onto the record until the Markman Hearing. ( See Plaintiff's Hr'g Ex. 6).

At the Markman Hearing, both parties elicited testimony from their 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, (Docket No. 89), as well as a hand-drawn graph Dr. Meyer created while testifying, Plaintiff's Hr'g Ex. 8, (Docket No. 89-5).

Following the hearing, the Court ordered the parties to contact the Special Master regarding whether they desired to file supplemental briefing on the objections placed on the record at the Markman Hearing. (Docket No. 86). Upon contacting the Special Master and receiving a briefing schedule from the Court, Defendants filed a Motion, (Docket No. 89), which was referred to the Special Master to prepare a Report and Recommendation. The Motion being fully briefed, Special Master McIlvaine filed his Report and Recommendation with the Court on January 28, 2015. (Docket No. 94). Defendants objected to same on February 11, 2015. (Docket No. 95). Plaintiff responded on February 18, 2015. (Docket No. 96). The Motion and Objections being fully briefed, the Court now considers same.


Rule 53(f)(3) of the Federal Rules of Civil Procedure provides:

The court must decide de novo all objections to findings of fact made or recommended by a master, unless the parties, with the court's approval stipulate that:
(A) the findings will be reviewed for clear error; or
(B) the findings of a master appointed under Rule 53(a)(1)(A) or
(C) will be final.

FED.R.CIV.P. 53(f)(3). Rule 53(f)(4) requires the court to "decide de novo all objections to conclusions of law made or recommended by a master." FED.R.CIV.P. 53(f)(4). As the parties in this action did not stipulate that the Special Master's findings would be reviewed for clear error or that his findings would be final, the Court's review of the Defendants' Objections is de novo .

Rule 16(f) relevantly states:

(f) Sanctions.
(1) In General. On motion of on its own, the court may issue any just orders, including those authorized by Rule 37(b)(2)(A)(ii)-(iv) if a party or its attorney:
* * *
(C) fails to obey a scheduling or other pretrial order.

FED.R.CIV.P. 16(f).

The decision to exclude evidence under Rule 37 is within the 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)). 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 (Setraline Hydrochloride Prods. Liab. Litig., No. 12-MD-2342, 2015 WL 115486 at *1 (E.D.Pa. Jan. 7, 2015) (citing ZF Meritor, LLC v. Eaton Corp., 696 F.3d 254, 298 (3d Cir. 2012) and In re Paoli R.R. PCB Litig., 35 F.3d at 791); see also Konstantopoulos v. Westvaco Corp., 112 F.3d 710, 719 (3d Cir. 1997).

This Court has previously held that "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 Nurserygoods Co. v. Thorley Indus., LLC, No. 12-196, 2013 WL 2471801 at *3 (internal quotes and citation omitted).


Defendants raise seven objections to the Special Master's Report and Recommendation. The Court addresses each, in turn.

a. Construction of LPR 4.3

Defendants argue that Forta should not have been permitted to introduce Dr. Meyer's rebuttal testimony (as underlined in Exhibit A, (Docket No 89-3)) and Hearing Exhibit 8, (Docket No. 89-5), because neither was disclosed prior to the Markman Hearing, (Docket No. 90 at 5). Specifically, Defendants contend that FED.R.CIV.P. 26(a)(2)(B) controls the pre- Markman hearing disclosures required by LPR 4.3.

Rule 26(a)(2)(B) requires an expert to provide, inter alia, "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; [and] iii. any exhibits that will be used to summarize or support them."[2] FED.R.CIV.P. 26(a)(2)(B) Defendants also refer to the 1993 Advisory Committee notes adopting revised Rule 26(a)(2)(B), which reads:

This paragraph imposes an additional duty to disclose information regarding expert testimony sufficiently in advance of trial that opposing parties have a reasonable opportunity to prepare for effective cross examination and ...

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