United States District Court, D. Columbia.
[Copyrighted Material Omitted]
For SD3, LLC, Plaintiff: Burt Alan Braverman, LEAD ATTORNEY, DAVIS WRIGHT TREMAINE, Washington, DC; Lisa Beth Zycherman, LEAD ATTORNEY, DAVIS WRIGHT TREMAINE, LLP, Washington, DC; David A. Fanning, SD3 LLC, Tualatin, OR.
For MICHELLE K. LEE, (Acting) Director, United States Patent and Trademark Office, Defendant: Mercedeh Momeni, LEAD ATTORNEY, U.S. ATTORNEY'S OFFICE, Civil Division, Washington, DC; William LaMarca, OFFICE OF THE SOLICITOR, U.S. Patent and Trademark Office, Alexandria, VA.
Royce C. Lamberth, United States District Judge.
Plaintiff SD3, LLC has sued for a patent on its saw-stopping safety technology. In short, SD3 claims that it has invented a new way to stop a saw blade almost instantaneously in the event of a stray finger, or other unsafe condition, entering its path. The government disagrees and the PTO denied SD3's patent application on the ground that it was anticipated by a 1974 patent that described a similar piece of technology. Now, SD3 moves for summary judgment and to exclude defendant's (" the Director's" ) expert witnesses. SD3 also asks that the Court exclude the most recent declaration of one of the Director's experts, Dr. Charles F. Landy, as untimely filed. For the following reasons, SD3's motion is denied in all respects. However, the Court will briefly reopen discovery so that SD3 may again depose Dr. Landy solely on the subject of his late filed declaration if it so chooses.
The factual and procedural background of this case is substantially set out in the Court's July 8, 2013 memorandum opinion regarding the Director's earlier motion for summary judgment. SD3, LLC v. Dudas, 952 F.Supp.2d 97 (D.D.C. 2013). A brief summary of that background relevant to decision on this motion is provided below.
A. SD3 Patent Application
SD3 applied for a patent on its saw stopping technology in 2002, defining its invention in two claims at issue in this case, claim 1 and claim 30. The claims state:
1. A machine comprising:
an operative structure adapted to perform a task, where the operative structure includes a mechanical cutting tool adapted to move in at least one motion; and
a safety system adapted to detect the occurrence of an unsafe condition between a person and the cutting tool, where the safety system includes a detection subsystem adapted to detect the unsafe condition, and a reaction subsystem
adapted to mitigate the unsafe condition;
where the reaction subsystem includes a brake mechanism adapted to stop at least one motion of the cutting tool within 10 milliseconds after detection of the unsafe condition.
30. The machine of claim 1 where the brake mechanism is adapted to stop at least one motion of the cutting tool in less than 5 milliseconds after detection of the unsafe condition.
Administrative Record (excerpts) at 836, 838, ECF No. 35-3. The Patent Examiner rejected claim 1 as lacking novelty under 35 U.S.C. § 102(b) and rejected claim 30 as obvious under 35 U.S.C. § 103(a). Ex parte Gass, No. 2007-4061, 2008 WL 2195265, at *1 (B.P.A.I. May 27, 2008). The prior art relied upon in so holding was U.S. Patent 3,858,095, which identifies inventors Wolfgang Friemann and Josef Proschka (" the Friemann patent" ). Id.; U.S. Patent 3,858,095 (filed Aug. 1, 1973) (issued Dec. 31, 1974). In the words of the Bureau of Patent Appeals and Interferences, the Friemann patent, similar to SD3's claimed invention, " discloses a machine including an operative structure adapted to perform a task, where the operative structure includes a mechanical cutting tool 5 adapted to move in at least one motion and a safety system adapted to detect the occurrence of an unsafe condition between a person and the cutting tool, where the safety system includes a detection subsystem 3 adapted to detect the unsafe condition." Ex parte Gass, 2008 WL 2195265, at *2 (internal citations omitted); see '095 Patent. The patent discloses that its safety system includes a braking mechanism adapted to stop a cutting tool within 10 milliseconds after detection of the unsafe condition. '095 Patent, col. 4 ll. 5-6. It also discloses that experiments had shown that by using a protective circuit arrangement along the lines of the claimed invention, it was possible to stop a cutting tool in about 5 milliseconds. Id. at col. 2 ll. 15-20.
The BPAI affirmed the Examiner as to claim 1, finding that SD3 had failed to establish that the Friemann patent did not enable a person of ordinary skill in the art to make or carry out the claimed invention without undue experimentation. Ex parte Gass, 2008 WL 2195265, at *4. It also affirmed the Examiner's finding with respect to claim 30, stating that SD3 failed to provide any substantial evidence to support the argument that " the claimed limitation" --of stopping a blade in less than 5 milliseconds, rather than 10 milliseconds--was " not a variable that can be optimized by the use of routine skill in the art and that it is a significant and difficult issue to adapt a brake mechanism to operate in the recited time scale." Id. at *6.
B. Present Litigation and Motion for Summary Judgment
SD3 filed suit pursuant to 35 U.S.C. § 145, seeking a reversal of the BPAI's decision and the award of a patent on claims 1 and 30. Compl., ECF No. 1. The Director later moved for summary judgment, ECF No. 7, which the Court denied after finding that SD3 had presented sufficient evidence to raise a genuine issue of material fact regarding its entitlement to a patent. SD3, LLC, 952 F.Supp.2d at 97. At that time, the Director had presented no additional evidence in support of its position, beyond the language of the Friemann patent, the findings of the BPAI and Examiner, and legal presumptions discussed below. Id. at 103. Now, SD3 moves to exclude the expert witnesses the Director has since put forward, in addition to moving for summary judgment. Pl.'s Mem. of Points and Authorities in Supp. of its Mot. to Exclude Expert Ops. and for Summ. J. 1-2, ECF No. 34-1 (" Pl.'s Mot." ).
II. REQUEST TO EXCLUDE DR. LANDY DECLARATION
Before the Court can consider SD3's motion to exclude expert opinions and for summary judgment, it must determine whether to exclude the Declaration of Dr. Charles F. Landy, submitted by the Director as an attachment to its response in opposition to SD3's motion on August 25, 2014. Dr. Charles F. Landy Decl., ECF No. 35-11. SD3 presents a laundry list of arguments for its exclusion, namely that it was filed late without justification, it does not correct prior testimony, its inclusion would be prejudicial to SD3, and that it is misleading and unhelpful. Pl.'s Reply Mem. to Def.'s Opp'n 13, ECF No. 36.
A party must make disclosures regarding its expert witnesses in written reports setting forth, inter alia, each expert's opinions, the basis for those opinions, and the facts or data considered in forming them. Fed.R.Civ.P. 26(a)(2)(B). These disclosures must occur " at the times and in the sequence that the court orders." Fed.R.Civ.P. 26(a)(2)(D). The most recent scheduling order in this case states that " [d]iscovery concerning PTO expert's review of documents produced by plaintiff on May 23, 2014, and any supplemental report he provides, will close on June 20, 2014." Scheduling Order, May 30, 2014, ECF No. 33. All other discovery closed on May 30, 2014. Id. Therefore, all expert disclosures must have occurred by June 20, 2014 in this case to comply with the Court's Scheduling Order.
To the extent required by Rule 26(e), a party must supplement its expert disclosures. Fed.R.Civ.P. 26(a)(2)(E). Rule 26(e) requires supplementing disclosures when 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." Fed.R.Civ.P. 26(e)(1)(A). As applied to expert witnesses, " the party's duty to supplement extends both to information included in the report and to information given during the expert's deposition." Fed.R.Civ.P. 26(e)(2). This rule provides a " limited exception" to the deadlines for expert reports imposed by Rule 26(a)(2). Richardson v. Korson, 905 F.Supp.2d 193, 199 (D.D.C. 2012). It " does not grant a license to supplement a previously filed expert report because a party wants to." Id. (quoting Estate of Gaither ex rel. Gaither v. District of Columbia, Civil Action No. 03-1458, 2008 WL 5869876, at *3 (D.D.C. Oct. 23, 2008)). As interpreted by decisions of this district, Rule 26(e)'s exception is " narrow" and only permits supplemental reports for the purpose of " correcting inaccuracies or adding information that was not available at the time of the initial report." Minebea Co. v. Papst, 231 F.R.D. 3, 6 (D.D.C. 2005).
Rule 37(c)(1) provides that a failure to disclose according to the requirements of Rule 26(a) or (e) causes the exclusion of the information not disclosed " unless the failure was substantially justified or is harmless." Fed.R.Civ.P. 37(c)(1). An important consideration in determining whether a failure to disclose was harmless is whether the late filed report is submitted well in advance of trial, leaving the opposing party time to adjust its trial preparation in light of the new information provided regarding the expert's opinion. Dormu v. District of Columbia, 795 F.Supp.2d 7, 28 n.16 (D.D.C. 2011). Another key consideration in determining the prejudicial impact of the late disclosure is whether discovery can be briefly reopened to ...