INVISTA NORTH AMERICA S.A.R.L. and AURIGA POLYMERS INC., Plaintiffs,
M&G USA CORPORATION and M&G POLYMERS USA, LLC, Defendants.
SUE L. ROBINSON, District Judge.
At Wilmington this 25th day of June, 2013, having considered three motions to exclude or strike filed by plaintiffs INVISTA North America S.a.r.l. and Auriga Polymers Inc. (collectively, "lnvista") and defendants M&G USA Corporation and M&G Polymers USA, LLC (collectively, "M&G") (D.I. 253; D.l. 284; D.l. 340);
IT IS ORDERED that said motions are granted in part and denied in part, as follows:
1. Background. lnvista is suing M&G for infringement of United States Patent Nos. 7, 919, 159 ("the '159 patent), 7, 943, 216 ("the '216 patent"), and 7, 879, 930 ("the '930 patent") (collectively, "the patents-in-suit"). (D.I.1; D.l. 7) Before the court are three motions to exclude or strike testimony: lnvista's motion to strike portions of Dr. Robert B. Moore's reply expert report and Dr. Moore's references to and reliance upon certain experimental data ("lnvista's first motion to strike") (D. I. 253); M&G's motion to exclude Dr. RichardS. Turner's testimony regarding infringement and secondary considerations ("M&G's motion to exclude") (D.I. 284); and lnvista's motion to strike M&G's summary declaration and supplemental interrogatory response regarding M&G's core documents ("lnvista's second motion to strike") (D. I. 340).
2. Pursuant to the scheduling order in this case and subsequent amendments, fact discovery closed on October 5, 2012; expert reports were due December 14, 2012; rebuttal reports were due January 21, 2013; reply reports were due February 1, 2013; and expert discovery closed February 20, 2013. (D. I. 18; D. I. 144; D. I. 151) The parties stipulated that the reply reports would be limited to the topic of "secondary considerations of obviousness." (D.I. 18 at ¶ 2(d)(1)) The scheduling order also provides that "[s]upplementations under Rule 26(e) [are] due as required by the rule." ( Id. at ¶ 2(e)) Trial is set to begin on July 17, 2013. ( Id. at ¶ 12)
3. Legal standards. The court evaluates discovery issues in patent cases under Third Circuit law. See Dow Chern. Co. v. Nova Chems. Corp., 2010 WL 2044931, at *1 (D. Del. May 20, 2010). Pursuant to Federal Rule of Civil Procedure 26(a)(2)(D), parties must disclose expert testimony "at the times and in the sequence that the court orders." If a party "learns that in some material respect the disclosure or response is incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing, " it must supplement or correct its disclosure. Fed.R.Civ.P. 26(e). "However, parties may not use their obligation to supplement as an excuse to violate the clear terms of a scheduling order, unilaterally buying themselves additional time to make disclosures, thereby unduly prejudicing other parties and potentially delaying the progress of a case." Abbott Labs. v. Lupin Ltd., Civ. No. 09-152, 2011 WL 1897322, at *3 (D. Del. May 19, 2011). When expert testimony is not timely disclosed, the court has the authority to exclude it from evidence. See United States v. 68.94 Acres of Land, 918 F.2d 389, 396 (3d Cir. 1990).
4. Exclusion of expert opinion and testimony may occur under Rules 37 or 16(f). Under Rule 16(f), the court may impose sanctions if, inter alia, a party or its attorney "fails to obey a scheduling order or other pretrial order." Fed.R.Civ.P. 16(f). Under Rule 37(c)(1), a party that fails to comply with Rule 26(a) or (e) (regarding failure to disclose or supplement) "is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless." Fed.R.Civ.P. 37(c)(1). Courts in the Third Circuit consider five factors when deciding whether to preclude evidence under Rule 37: (1) the prejudice to or surprise of the party against whom the evidence is offered; (2) the ability of that injured party to cure the prejudice; (3) the likelihood of disruption of trial; (4) the bad faith or willfulness involved in not complying with the disclosure rules; and (5) the importance of the evidence to the proffering party ("the Meyers factors"). See Konstantopoulos v. Westvaco Corp., 112 F.3d 710, 719 (3d Cir. 1997) (citing Meyers v. Pennypack Woods Home Ownership Ass'n, 559 F.2d 894, 904-05 (3d Cir. 1977)). "Courts must... be mindful that the exclusion of critical evidence is an "extreme" sanction, not normally to be imposed absent a showing of willful deception or "flagrant disregard" of a court order by the proponent of the evidence.'" Tracinda Corp. v. DaimlerChrysler AG, 362 F.Supp.2d 487, 506 (D. Del. 2005) (citation omitted).
5. The Supreme Court in Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 600 (1993), made clear that courts have to play a gatekeeping role with respect to experts. According to the Supreme Court, Rule 702 of the Federal Rules of Evidence is the primary locus of the gatekeeping role. Pursuant to Rule 702, a party can offer testimony of an expert witness at trial so long as the expert is qualified, the methodology the expert uses is reliable, and the opinion fits the facts of the case. See Elcock v. Kmart Corp., 233 F.3d 734, 741 (3d Cir. 2000). A trial judge, then, is tasked with being a "gatekeeper' to ensure that any and all expert testimony is not only relevant, but also reliable.'" Pineda v. Ford Motor Co., 520 F.3d 237, 243 (3d Cir. 2008).
6. lnvista's first motion to strike. lnvista's first motion to strike seeks to strike various opinions provided by Dr. Moore, M&G's expert. First, lnvista contends that 46 pages of Dr. Moore's 52-page reply expert report on invalidity are untimely and improper because they address topics beyond secondary considerations. (D. I. 254 at 4 n.4, 16-17) M&G contends that those 46 pages are a supplement to Dr. Moore's opening expert report, timely filed on February 1, 2013, the deadline for expert reply briefs, and permissible under Rule 26(e). (D. I. 301 at 4-6) The court finds that, although not labeled as such, the 46 pages at issue were submitted in response to arguments in Dr. Turner's rebuttal report that Dr. Moore's report was incomplete for failing to specifically cite support for his opinions. Thus, viewed as a supplement, those 46 pages ("Dr. Moore's supplement") were timely filed and appropriately clarified Dr. Moore's opening report. They included only subject matter that was originally disclosed in Dr. Moore's opening report and presented no new or changed opinions. Even if there were some prejudice, such prejudice was curable by lnvista. Dr. Moore's supplement was provided to lnvista nearly a week before Dr. Turner's deposition (which, in any case, focused on Dr. Turner's report); about two weeks before Dr. Moore's deposition; and about three weeks before the close of expert discovery. ( See id. at 7-8; see also D. I. 322 at 7 n. 7) lnvista had ample opportunity to prepare for Dr. Moore's deposition and, in fact, questioned him about the supplement. lnvista has not made a showing that Dr. Moore's supplement would likely disrupt trial or that M&G made a bad faith or willful attempt to avoid complying with the scheduling order. At the same time, Dr. Moore's supplement is of high importance to M&G because it provides supporting citations to his previously disclosed opinions. In light of these considerations, the court does not find exclusion of Dr. Moore's supplement to be warranted.
7. lnvista also asks the court to strike Dr. Moore's reference to testing done by PET Processors LLC and Plastic Technologies, Inc. ("the PET and PTI experiments"), which Dr. Moore used to form his invalidity opinion of non-enablement of the '159 and '216 patents. (D. I. 254 at 2-3) Federal Rule of Civil Procedure 26(a)(2)(B)(ii) requires disclosure of "the facts or data considered by the witness in forming [his or her opinions]." According to lnvista, M&G selectively withheld information, such that the test data and results provided to lnvista were "an incomplete set of all facts and data considered in forming [Dr. Moore's] opinions." (D.I. 322 at 9; see also D.l. 254 at 10-12) lnvista mainly supports its argument by alleging that M&G failed to initially provide all information that Dr. Moore considered and has subsequently engaged in "a pattern of conduct" to improperly block discovery related to the PET and PTI experiments. (D.I. 254 at 4, 8, 18) M&G asserts that it has produced all facts and data that Dr. Moore "considered or relied on" in forming his invalidity opinions and that any additional information that lnvista seeks is privileged, under Rule 26(b)(4)(C)(ii), as "communications [that] identify facts or data that the party's attorney provided and that the expert considered in forming the opinions to be expressed." (D.I. 301 at 10; D.l. 302 at ¶ 11) The court, at this time, does not find the extreme sanction of precluding all references and reliance on the PET and PTI experiments to be appropriate and will deny lnvista's motion with respect to Dr. Moore's references to and reliance upon that data. However, to the extent the parties' dispute regarding the scope of disclosure is premised on different interpretations of what constitutes data "considered" by an expert in the context of Rule 26, the court notes that M&G cannot withhold data from the PET and PTI experiments, even if Dr. Moore "relied on" only selected portions of the data. Therefore, if it has not done so already, M&G must provide lnvista with all of the data and results from the PET and PTI experiments.
8. lnvista also asks the court to strike portions of Dr. Moore's April 8, 2013 declaration ("Dr. Moore's declaration") (D.I. 304) submitted with M&G's reply brief for summary judgment of invalidity. ( See D.I. 322 at 2) Upon careful review, the court agrees with lnvista that Dr. Moore's declaration contains previously undisclosed theories of invalidity in all or portions of paragraphs 7-8, 10, 13-17, 19, 31-35, 37, 44 and 51. ( See id. at 5-6) To allow these new expert opinions, in the middle of summary judgment briefing and just prior to trial, would unduly prejudice lnvista. Therefore, the court grants lnvista's motion to strike with respect to the following new material in Dr. Moore's declaration:
a. Opinion that the '925 reference discloses a resin "having both passive and active barrier properties." (D.I. 304 at ¶ 7)
b. The teaching of the Moore reference and opinion regarding the N66 nylon polar ...