Pactiv Corporation v. Multisorb Technologies, Inc. et al

Filing 361

WRITTEN Opinion entered by the Honorable Harry D. Leinenweber on 5/29/2013: For the reasons stated herein, Defendant Multisorb Technologies, Inc.'s Motion to Strike and Exclude Portions of the Expert Report of Dr. Lisa D. Detter-Hoskin and Alleged Prior Art Not Disclosed in Pactiv's Invalidity Contentions (ECF No. 348) is granted. [For further details see order.]Electronic notice(jat, )

Order Form (01/2005)

United States District Court, Northern District of Illinois
Name of Assigned Judge
or Magistrate Judge

Harry D. Leinenweber

CASE NUMBER

10 C 461

CASE
TITLE

Sitting Judge if Other
than Assigned Judge

DATE

5/29/2013

Pactiv Corp. vs. Multisorb Techs., Inc.

DOCKET ENTRY TEXT

For the reasons stated herein, Defendant Multisorb Technologies, Inc.’s Motion to Strike and Exclude Portions
of the Expert Report of Dr. Lisa D. Detter-Hoskin and Alleged Prior Art Not Disclosed in Pactiv’s Invalidity
Contentions (ECF No. 348) is granted.

O[ For further details see text below.]

Docketing to mail notices.

STATEMENT
Before the Court is Defendant Multisorb Technologies, Inc.’s (“Multisorb”) Motion to Strike and Exclude
Portions of the Expert Report of Dr. Lisa D. Detter-Hoskin and Alleged Prior Art Not Disclosed in Pactiv’s
Invalidity Contentions. For the reasons stated below, Defendant’s motion is GRANTED.
I. BACKGROUND
The Court has described the factual background of this action previously. See, e.g., ECF Nos. 226, 290, 320.
The parties in this patent infringement action are in the midst of exchanging expert reports. Plaintiff Pactiv,
LLC (“Pactiv”) submitted the report of Dr. Lisa D. Detter-Hoskin (the “Report”) in support of its case.
Multisorb seeks to strike and exclude portions of the Report.
On January 17, 2012, Pactiv served its Final Unenforceability and Invalidity Contentions Pursuant to Local
Patent Rule 3.1 (“Invalidity Contentions”). See Def.’s Mem. in Support of Mot. to Strike, Ex. C, ECF No.
348-4. The Invalidity Contentions disclosed four prior art references: United States Patent Nos. 4,524,015,
4,992,410 and 4,996,068 and a prior publication (Ramakrishnan, Iron Powder from Iron Scrap., Conservation
& Recycling, Vol. 6, No. ½, pp. 49-54, 1983).
On May 13, 2013, Pactiv served the Report on Multisorb. In it, Dr. Detter-Hoskin cites to three patents
(Yoskikawa ‘773, Nakamura ‘972 and Pemsler ‘262) and two journal articles (Huthen and Pemsler 1990) that
were not included in Pactiv’s Invalidity Contentions. Multisorb argues that this disclosure of “New Prior
Art” not provided in Pactiv’s Invalidity contentions is improper. Multisorb also argues that Pactiv has made
new invalidity arguments not made previously by relying on combinations and citations of prior art not
disclosed previously in its Invalidity Contentions.

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STATEMENT
II. LEGAL STANDARD
Under Federal Rule of Civil Procedure 37(c), if a party fails to provide information or identify a witness as
required under Rule 26(a) or (e), the party is not allowed to use that information or witness to supply
evidence unless the failure was substantially justified or harmless. Fed. R. Civ. P. 37(c)(1).
Under Local Patent Rule 2.3, a party is required to provide:
(1) identification, with particularity, of each item of prior art that allegedly anticipates each
asserted claim or renders it obvious…
(2) a statement of whether each item of prior art allegedly anticipates each asserted claim or
renders it obvious. If a combination of items of prior art allegedly makes a claim obvious,
each such combination, and the reasons to combine such items must be identified;
(3) a chart identifying where specifically in each alleged item of prior art each element of
each asserted claim is found, including for each element that such party contends is governed
by 35 U.S.C. §112(6), a description of the claimed function of that element and the identify of
the structure(s), act(s), or material(s) in each item of prior art that performs the claimed
function.
L.P.R. 2.3(b)(1)-(3). Local Patent Rule 3.1 requires that Final Unenforceability and Invalidity Contentions
must contain the information required by Local Patent Rule 2.3(b)(2)-(3).
III. ANALYSIS
1. “Complementary” Sources
Multisorb contends that the Report discloses new prior art references. Pactiv responds that Dr. DetterHoskin, without relying on these references, documents her review and consideration of them. Pactiv states
that Yoshikawa ‘773 and Pemsler ‘262 are part of the prosecution history for the Multisorb ‘590 and ‘872
patents, and that Dr. Detter-Hoskin’s understanding of the ‘590 and ‘872 patents would be incomplete and
her analysis “slipshod” without them. Pl.’s Resp. at 3. Pactiv also argues that it was necessary to review
references cited on the face of the documents relied on in preparation of her opinion. For example,
Nakamura ‘972 is cited on the face of Takahashi ‘015 and Hulthen was cited in Ramakrishnan. Takaharshi
‘015 and Ramakrishnan are both prior art references Pactiv relies on for invalidity. Thus, Dr. Detter-Hoskin
included all of these as “complementary to understanding the invalidity references.” Id. Pactiv’s counsel
confirmed that these sources were included as background information, when he told the Court that they were
not “necessary references” and were not included in Dr. Detter-Hoskin’s invalidity opinion. Instead, they
were given as background to the Report.
Pactiv’s arguments are unavailing. Pactiv’s first argument, that these references only provided context and
were included “as complementary to understanding the invalidity references” is unpersuasive. See id. If
these new materials are not prior art, not necessary references, and not something that their expert relied
upon, then there is truly no reason for them to be in the Report. If, however, these materials are prior art,
then they should have been disclosed over a year ago with the Invalidity Contentions pursuant to Local
Patent Rule 3.1. Multisorb points out several cases that rejected similar attempts to offer previously
undisclosed materials as “background on the art” or “state of the art,” and this Court agrees that parties
should not be able to circumvent the disclosure requirements of our Local Patent Rules by offering such
materials as background. See, e.g., Life Techs. Corp. v. Biosearch Techs., Inc., No. C 12-00852WHA, 2012

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STATEMENT
WL 4097740 at *1-2 (N.D. Cal. Sept. 17, 2012); Emcore Corp. v. Optium Corp., No. 7-326, 2009 WL
3381800 at *2 (W.D. Pa. Oct. 16, 2009).
Similarly, Pactiv’s argument that Dr. Detter-Hoskin’s inclusion of these new materials is acceptable because
some of them were referred to in the patents-in-suit is also unsuccessful. Again, if the materials are not prior
art and not necessary to Dr. Detter-Hoskin’s opinions, there is no reason to include them. If they are new
prior art, they were required to be disclosed previously by our Local Patent Rules. It would be improper to
allow an expert to rely on undisclosed prior art merely because it was cited in an asserted patent. See Life
Techs., 2012 WL 4097740 at *2.
2. New Validity Arguments
Multisorb next contends that the Report makes new invalidity arguments not made previously in Pactiv’s
Invalidity Contentions. Specifically, Multisorb claims that Pactiv has relied on combinations of prior art not
disclosed in its Invalidity Contentions. Multisorb argues that under Local Patent Rules 2.3 and 3.1, all
combinations and citations of the Cited Prior Art must have been disclosed in Pactiv’s Invalidity Contentions.
Pactiv responds that its arguments are not new because it identifies each item of prior art and how that item is
used in combination to render the asserted claims invalid as obvious. Pactiv claims that it did not “exhaust
the permutations for combinations of prior art” because its claim chart is an “exemplary claim chart.” Pl.’s
Resp. at 11. Pactiv claims that it clearly carved out that the chart contained “exemplary relevant portions
while reserving the right for expert testimony on combining the cited art.” Id. Specifically, the Invalidity
Contentions stated:
Pactiv has identified at least one citation per element or limitation for each reference identified
in the charts contained in Exhibit A, each and every disclosure of the same element or
limitation in the same reference is not necessarily identified . . . . Pactiv cites exemplary
relevant portions of identified references, even where a reference may contain additional
disclosure for a particular claim element or limitation, and reserves all rights to rely on other
portions of the identified references to support their claims and/or defenses.
***
Pactiv may rely on uncited portions of the prior art references and on other publications and
expert testimony to provide context and as aids to understanding and interpreting the portions
of the prior art references that are cited.
Disclosures relating to initial elements of dependent claims are disclosed in connection with
the independent claims from which they depend. Pactiv may also rely on uncited portions of
the prior art references, other publications, and the testimony of experts to establish that a
person of ordinary skill in the part would have been motivated to modify or combine certain of
the cited references so as to render the claims obvious.
See ECF No. 348-4 at PageID# 8350-51. The Court finds such language to be at odds with this District’s
Local Patent Rules. L.P.R. 2.3 explicitly requires “a chart identifying where specifically in each alleged item
of prior art each element of each asserted claim is found . . . .” L.P.R. 2.3(b)(3). An “exemplary chart” that
allows Pactiv to rely on uncited portions of prior art is contrary to the high level of specificity required by
this rule, which demands identification of wherein each alleged item of prior art each claim is found.
Pactiv argues that it complied with the Local Patent rules because the body of its Invalidity Contentions state

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STATEMENT
that some of Multisorb’s patent claims are invalid based on combinations of prior art references. However,
simply citing or referencing a piece of prior art, without specifying where an element of an asserted claim is
found therein, is also insufficient under Rule 2.3. See Life Techs., 2012 WL 4097740 at *3 (finding broad
statement in invalidity contentions that prior art renders asserted claims obvious insufficient under local
patent rule requiring “a chart identifying where specifically in each alleged item of prior art each limitation of
each asserted claim is found”). Pactiv’s experts are limited to the Invalidity Contentions it served on January
17, 2012. To allow an expert to go beyond those would render them useless and ignore the specificity
requirements of the Local Patent Rule 2.3.
For the reasons stated herein, Defendant Multisorb’s Motion to Strike is granted. As such, pages 5-7, 37-39,
¶¶ 127, 133, 136, 138, 140, 147, 158, 160-63, 171, 172, 175, 179, 182, 183, 186 and 190, items 12-16 of
Exhibit B, Exhibits H, I, J, K and L of the Detter-Hoskin Report are struck.

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