Oil-Dri Corporation of America v. Nestle Purina Petcare Company

Filing 680

MEMORANDUM OPINION AND ORDER (regarding certain motions in limine and Daubert motions) signed by the Honorable Matthew F. Kennelly on 3/8/2019. (mk)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
OIL-DRI CORP. OF AMERICA,
Plaintiff,
vs.
NESTLE PURINA PETCARE CO.,
Defendant.

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Case No. 15 C 1067

MEMORANDUM OPINION AND ORDER
This patent infringement lawsuit by Oil-Dri Corporation of America ("Oil-Dri")
against Nestle Purina PetCare Company ("NP") is set for trial on March 18, 2019. In
this decision, the Court rules on a number of the parties' motions in limine and Daubert
motions, while reserving others for further argument at the final pretrial conference set
for this afternoon.
A.

Defendant's Daubert motions
NP has moved to exclude all or parts of the anticipated testimony of three of Oil-

Dri's experts: Dr. G. Robert Goss, Julie Davis, and James Harrison.
Under Federal Rule of Evidence 702 and governing caselaw, including Daubert
v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), expert testimony is
admissible if the witness is qualified, applies reliable methodology, and is rendering
testimony that will assist the trier of fact. "The objective of Daubert's gatekeeping
requirements is to ensure the reliability and relevancy of expert testimony. It is to make
certain that an expert, with testimony based upon professional studies and personal

experience, employs in the courtroom the same level of intellectual rigor that
characterizes the practice of an expert in the relevant field." Kumho Tire Co. v.
Carmichael, 526 U.S. 137, 152 (1999).
Assessment of the reliability of testimony involves considering a variety of
factors, including:
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whether the proffered theory can be tested;

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whether it has been subjected to peer review;

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whether it has been evaluated in light of potential rates of error; and

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whether it has been accepted in the relevant scientific community;

See, e.g., Baugh v. Cuprum S.A. de C.V., 845 F.3d 838, 844 (7th Cir. 2017); Fuesting v.
Zimmer, Inc., 421 F.3d 528, 534-35 (7th Cir. 2005); see also Fed. R. Evid. 702, 2000
adv. comm. notes (listing additional factors). Not all of these factors either necessarily
or exclusively apply in every situation, and no single factor is dispositive. Kumho Tire,
526 U.S. at 141, 151-52. Rather, reliability is determined on a case-by-case basis.
C.W. v. Textron, Inc., 807 F.3d 827, 835 (7th Cir. 2015). It is clear, however, that
"subjective belief or unsupported speculation" is inadmissible, even coming from an
expert, American Honda Motor Co. v. Allen, 600 F.3d 813, 818 (7th Cir. 2009), and that
an opinion "that is connected to existing data only by the ipse dixit of the expert" is
inadmissible. Gen. Elec. Co. v. Joiner, 522 U.S. 136, 146 (1997).
The Court will need to hear argument at the final pretrial conference regarding
Davis. The Court denies NP's motions regarding Goss and Harrison for the reasons
described below.

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1.

Dr. Goss

Dr. Goss, a chemist, performed certain testing of NP's product both before Oil-Dri
filed the present lawsuit and in or about March 2017. He took NP's agglomerated
granules, scraped portions from them, and examined the scrapings under a microscope.
He did this in order to estimate the "MPS" (mean particle size) of the granules' clay
constituents. At the time, Dr. Goss did not have access to NP's precursor clay
materials. He obtained those during discovery in the case and did further testing to
attempt to confirm his earlier conclusions.
NP has moved to bar testimony about the earlier testing—which NP refers to as
"destructive" testing—arguing that Goss's alteration of the product changed it and is
therefore inappropriate; his testing cannot be replicated; it is inherently unreliable; and it
is not scientifically accepted. In response, Oil-Dri says that because Dr. Goss later
obtained and tested the constituent clays, "[i]t is now unnecessary for infringement
purposes for Goss to rely on his earlier testing," Pl.'s Resp. to Def.'s Mots. In Limine
("Pl.'s Resp.") at 6, but that Oil-Dri "may wish to present evidence of the postcomposition testing as background information regarding the proof difficulties it
encountered prior to filing this lawsuit." Id. The latter point is difficult to comprehend;
the Court has a hard time seeing why evidence of "proof difficulties [Oil-Dri]
encountered prior to filing this lawsuit" would be relevant at trial. But on the assumption
that Oil-Dri can show the relevance of this evidence, the Court addresses NP's request
to preclude it.
Oil-Dri makes a persuasive case that because, at the time, it did not have access
to NP's constituent clays, Goss's testing was the only viable method of estimating the

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MPS of those materials. The Court finds unpersuasive NP's contention that Goss's
methodology was so inherently unreliable as to be inadmissible; this and NP's other
contentions may affect the weight to be given to Dr. Goss's testimony, but they do not
impact its admissibility. In this regard, as the Supreme Court stated in Daubert,
"[v]igorous cross-examination, presentation of contrary evidence, and careful instruction
on the burden of proof are the traditional and appropriate means of attacking shaky but
admissible evidence." Daubert, 509 U.S. at 596. And on the question of alteration,
given the nature of NP's product some form of disaggregation was necessary in order to
estimate the MPS of the constituent materials, given Oil-Dri's lack of access (at the
time) to those materials in their pre-agglomeration state. Nothing about Goss's
methodology affects any of the Court's determinations regarding construction of claim
terms.
2.

Harrison

Harrison is an Oil-Dri employee who is offered to present testimony on issues
relating to damages. Specifically, he will render an opinion on "the cost savings to [NP]
for using less sodium bentonite (NaB) in its Accused Products (an average of 35%
instead of 80%), based on corresponding savings in transportation cost." Pl.'s Resp.,
Ex. F at 2. NP says that Harrison is basing his opinion about NP's alleged cost savings
"on speculation about Oil-Dri's hypothetical savings had it made the Accused Products."
Def's Daubert Mots. and Mots. In Limine ("Def.'s Mot.") at 11. The Court does not read
Harrison's testimony that way; it sees nothing in Harrison's report (and NP cites nothing)
reflecting that he is speculating or relying on Oil-Dri's "hypothetical savings." Rather, he
appears to have relied on publicly available data. Any differences between this data

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and NP's actual figures—which Harrison, an Oil-Dri employee, was not permitted to see
due to a protective order imposed at an earlier stage of the case—affects only the
weight to be given to his testimony, not its reliability or admissibility. The Court denies
NP's request to bar all or parts of Harrison's testimony.
B.

Defendant's motions in limine
NP has withdrawn its motions in limine 3, 5, and part of 6 based on the Court's

summary judgment ruling. The Court will address only the remaining motions.
1.

IPR proceeding

NP asks to exclude evidence regarding the inter partes review proceeding
regarding the '019 patent, even about the existence of the proceeding. Oil-Dri objects,
but it is not clear to the Court exactly what about the IPR proceeding Oil-Dri wants to
introduce, and for what purpose. Oil-Dri should be prepared to answer these questions
directly and succinctly at the final pretrial conference.
2.

NP's privilege log

The Court grants NP's motion to exclude evidence regarding (or derived from) its
privilege log. Under 35 U.S.C. § 298, a party may not attempt to prove willful
infringement through the alleged infringer's failure to present advice-of-counsel
evidence. But citing or relying on NP's privilege log risks just that, which would be
grossly unfair. Oil-Dri says that it wants to elicit, via information derived from the
privilege log, "the sheer number of times that key [NP] personnel—those involved in the
development of the Accused Products and in the decision to manufacture and sell the
Accused Products—were engaged in discussions concerning the '019 Patent." Pl.'s
Resp. at 13. Because the documents were withheld as privileged, however, Oil-Dri has

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no legitimate way to know their contents. Thus the evidence of the number of citations
on the privilege log has, at best, minimal probative value for the purpose cited by OilDri. Perhaps more importantly, Oil-Dri's proposed use of this material amounts to a
disguised use of NP's invocation of privilege as evidence of willfulness, which is
inappropriate. 1 Thus Oil-Dri cannot use the privilege log as it proposes. See Fed. R.
Evid. 403. If, as Oil-Dri fears, NP personnel disavow or express a failure to recall
knowledge or discussions of the '019 patent, then Oil-Dri may be able to use the
privilege log to refresh recollection or, possibly, for impeachment, see Pl.'s Resp. at 14
n.17 (citing cases), but if this happens it will have to be done carefully and under the
Court's guidance to avoid the possibility of unfair prejudice to NP.
4.

Linck

The Court will need to hear further argument regarding this motion at the final
pretrial conference.
6.

Dr. Goss infringement opinions

NP asks the Court to bar Dr. Goss from offering "his own claim interpretation";
any opinions concerning the "predetermined" claim limitation; and any opinions relying
on NP's '570 patent. The Court grants the motion on the last point; indeed, the Court
sees no basis for any party to make reference to the '570 patent in this case.
By contrast, the Court sees nothing inappropriate about the statement in Dr.
Goss's report regarding the precursor clay issue. See Def.'s Mot. at 17 (citing id., Ex.
24 ¶ 13).

In a footnote, Oil-Dri seems to contend that some materials listed on the privilege log
are not actually privileged, see Pl.'s Resp. at 13 n.15, but if so that challenge should
have been raised long ago.
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Matters are somewhat different, however, with regard to Dr. Goss's conclusions
regarding the "predetermined" claim limitation. Claim 1 describes "a particulate nonswelling clay material having a predetermined mean particle size no greater than about
4 millimeters." The Court rejected both sides' proposed interpretations: NP argued that
the term required actual measurement of the materials before mixing, and Oil-Dri
argued that the term only required the particles to be capable of measurement. Instead,
the Court concluded that the ordinary meaning of "predetermined" applies, specifically
"decided upon in advance." Claim Construction Decision at 5.
NP argues that Dr. Goss runs afoul of the Court's ruling via several statements in
his report to the effect that the MPS can be or is capable of being determined before
mixing. See Def.'s Mot. at 18 (citing id., Ex. 24 ¶¶ 15-17). There is nothing wrong with
paragraph 15 of Dr. Goss's report; there he specifically adopts the Court's definition:
"i.e., the MPS is decided upon in advance (i.e., prior to mixing)." Id., Ex. 24 ¶ 15. In
paragraphs 16 and 17, however, Dr. Goss reaches conclusions that use both the
Court's definition and the one that Oil-Dri unsuccessfully advocated:
16.
That the MPS of the non-swelling clay material in the
Accused Products is less than 4mm (4000 microns), as recited in Claims 1
and 30 of the '019 Patent, and is "predetermined" or capable of being
determined prior to mixing of the different clays, is shown by my testing . .
..
17.
That the MPS of the sodium bentonite in the Accused
Products is less than 2mm (2000 microns), as recited in Claims 1 and 30
of the '019 Patent, and is "predetermined" or capable of being determined
prior to mixing of the different clays, is shown by my testing . . . .
Id. ¶¶ 16-17 (emphasis added). These portions of Dr. Goss's report partly rely on OilDri's rejected interpretation. Dr. Goss may not use the "capable of being determined"
language during his testimony. But there is no basis to exclude his infringement
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testimony on "predetermined" claim limitation in its entirely as NP proposes.
7.

NP's size and wealth

NP seeks to bar evidence or argument regarding its wealth and size. Oil-Dri
says that it wants to be able to argue that NP is a big company because, it contends,
this tends to make it less believable that it would have only a handful of records, or only
cursory information, on various key issues. See Pl.'s Resp. at 16-17. NP's size,
however, contributes only minimally to this proposition, and it runs the risk of unfairly
prejudicing the jury (the same is true, indeed more so, regarding reference to NP as "a
large multinational corporation," see id. at 17). The Court bars argument along these
lines under Rule 403.
The Court reaches a different conclusion regarding Oil-Dri's theory that NP,
which evidently saw itself as a market leader, might have been motivated to steal OilDri's invention in order to recapture the leading position in the animal litter market. See
id. at 17, point (4). The proposition that NP saw itself as a market leader—assuming
Oil-Dri can elicit it via admissible evidence—has some probative value in this regard
and does not run any significant risk of unfairly prejudicing NP. On the other hand, the
following contention by Oil-Dri has no real probative value, so the Court excludes it:
the fact that Oil-Dri has about the same number of animal litter patents as
[NP], even though [NP] is a company about 300 times larger than it,
showing that Oil-Dri was a leader in terms of such patent notwithstanding
its much smaller size.
Id., point (5).
Oil-Dri's last point is that a defendant's revenues, market share, and wealth are
relevant factors that could influence a hypothetical negotiation over a reasonable royalty
under Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y.
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1970), and that NP itself relies on its size and wealth in arguing that Oil-Dri's proposed 3
percent royalty rate is too high. See Pl.'s Resp. at 17 & n.22. The Court will need to
hear argument on this point at the final pretrial conference.
8.

Johnson "new opinion and analysis"

The Court overrules NP's objection to testimony by Oil-Dri expert Clifford
Johnston regarding certain corrections or modifications to his written report that were
provided on the morning of his deposition. This material was produced late, but NP had
an adequate opportunity to question Johnston on this material, so the late production
was harmless. See Fed. R. Civ. P. 37(c)(1).
NP also asks the Court to exclude a declaration by Johnston submitted in
connection with Oil-Dri's summary judgment response, well after the close of discovery.
Oil-Dri seeks to justify this by arguing that this was needed to respond to material in OilDri's rebuttal expert reports. See Pl.'s Resp. at 18-19. The Court will need to hear
further argument on this point at the final pretrial conference.
9.

Canadian "Maxx Scoop" sample

The Court overrules NP's request to exclude a physical sample of a "Maxx
Scoop" product that Oil-Dri has relied upon. Contrary to NP's contention, Oil-Dri
appears to have been able to sufficiently authenticate the sample and lay the foundation
for its admission. See Pl.'s Resp. at 19. NP's other arguments may bear on the weight
to be given to this evidence, but they do not undermine its admissibility.
C.

Plaintiff's motions in limine
1.

Dr. Boxley and Jenkins

Oil-Dri has moved to exclude certain testimony by defense experts Dr. Chett

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Boxley and Dennis Jenkins. NP is offering testimony by both of these witnesses on the
question of infringement.
Oil-Dri first argues that certain opinions by Dr. Boxley and Jenkins contradict the
Court's claim construction decision regarding the terms "predetermined" and "mean
particle size." The Court will need to hear further argument on these points at the final
pretrial conference.
Next, Oil-Dri says that Dr. Boxley and Jenkins are offering testimony regarding
how NP sizes the clays in the accused products that contradicts testimony given by
NP's Rule 30(b)(6) witness on this topic. Testimony by a 30(b)(6) witness, however,
does not amount to a binding judicial admission by the entity that designated the
witness. See A.I. Credit Corp. v. Legion Ins. Co., 265 F.3d 630, 637 (7th Cir. 2001).
Oil-Dri is free to offer the 30(b)(6) testimony—and the Court will, if asked, instruct the
jury regarding the nature and import of such testimony—and Oil-Dri may use it to
contradict NP's contentions, impeach Dr. Boxley and Jenkins, or for any other
appropriate purpose. But the Court will not prohibit these witnesses from testifying or
relying upon matters that contradict NP's 30(b)(6) witness. Oil-Dri contends, as part of
this same argument, that NP essentially obstructed its efforts to obtain information
regarding particle size and other matters pertinent to NP's manufacturing of the accused
products. But none of this alters the fact that, under controlling authority in this circuit,
the 30(b)(6) testimony is not a binding judicial admission.
Oil-Dri next argues that Jenkins, though not disclosed as a fact witness, bases
certain of his opinions on his work for Clorox, a cat litter manufacturer, in the 1990s. In
response, NP says that it seeks only to have Jenkins rely on documents that were

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properly disclosed during discovery and for which a proper evidentiary foundation is laid
at trial, and that in doing so, Jenkins will not testify regarding his personal knowledge of
these matters but rather will use them only to show what a person of ordinary skill in the
field would have known at the relevant time. See Def.'s Resp. to Pl.'s Mots. In Limine
("Def.'s Resp.") at 3-4. This seems to be an appropriate undertaking that does not
improperly make Jenkins a fact witness. And Jenkins's report, as discussed by NP in its
response, see id. at 4-5, abides by these limitations—which the Court will also enforce
during Jenkins's testimony. There appears to be only one legitimate dispute regarding
this point, concerning the timeliness of production of certain of the records in question.
The parties should be prepared to address this at the final pretrial conference.
Finally, the Court overrules Oil-Dri's objection to reference by NP on prior art
referenced as "Pattengill Mixture 7." This prior art consists of a description in a written
publication, not a physical litter, so Oil-Dri's contentions regarding omission or
nondisclosure of this during discovery lack merit. The Court also notes that this
particular prior art was timely disclosed in NP's final invalidity contentions.
2.

Dickinson

The Court will need to hear further argument at the final pretrial conference
regarding Oil-Dri's motion to bar testimony by NP expert witness Q. Todd Dickinson.
3.

NP R&D expenses

Magistrate Judge Schenkier, who supervised discovery in this case when it was
assigned to District Judge Amy St. Eve, entered an order on February 22, 2018 that
included the following determination:
By 3/02/18, [NP] shall supplement its response to Interrogatory No. 17 to
add any additional calculations of research and development costs, and
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for each calculation of research and development cost, an explanation of
how the cost was calculated, and by 3/23/18, [NP] shall produce a Rule
30(b)(6) witness to testify about the costs and their calculation. [NP] WILL
NOT BE PERMITTED TO USE AT TRIAL EVIDENCE OF ANY COSTS
WHICH ARE NOT DISCLOSED BY 3/02/18, OR FOR WHICH THE
MANNER OF THEIR CALCULATION IS NOT DISCLOSED BY 3/02/18 . .
..
Order of Feb. 22, 2018 (dkt. no. 279). NP evidently was unable to find documentation
regarding its actual R&D costs for relevant products and says those documents were
lost. It intends to use, instead, estimates of what the costs likely would have been,
based on other information that it timely produced. This does not run afoul of Judge
Schenkier's order. In addition, the Court is unpersuaded by Oil-Dri's contention that NP
did not conduct a reasonably diligent search for records of its actual R&D expenses.
Oil-Dri may, if it wishes, introduce evidence regarding the fact that NP does not have
actual records of its R&D expenses and may use this to argue that NP's estimates
should be disregarded or given little weight. But it has not made the case for excluding
the estimates. 2
4.

"Entire market value theory" evidence; and

5.

Western Aggregate and Alterlink licenses

The Court will need to hear further argument on these motions during the final
pretrial conference.

There is nothing inappropriate, as Oil-Dri suggests, see Pl.'s Mots. In Limine at 14
n.23, in NP saying—assuming there is evidence to support it—that the records no
longer exists due to the passage of time. But NP may not attempt to cast blame on OilDri for this by, for example, suggesting that Oil-Dri delayed filing suit, as there is no
limitations or laches defense that will be before the jury at trial.
2

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6.

Reputation evidence

NP may not introduce testimony, other evidence, or argument that it is a "good
company," good corporate citizen, respects patent / intellectual property rights, or other
similar evidence. This evidence is irrelevant, see Fed. R. Evid. 404(a)(1), and even if
arguably has some probative value, it is far outweighed by the likelihood of jury
confusion and unfair prejudice to Oil-Dri. Rather, the evidence is confined to matters
involving the particular patents and products at issue in the case. If NP runs afoul of
this limitation, it will be opening the door to at least some of the "prior bad acts"
evidence cited by Oil-Dri in appendix 1 to its motions in limine.
There is nothing inappropriate, however, about NP offering testimony or other
evidence that its products are high quality products. This evidence is relevant for the
reasons described in NP's response to Oil-Dri's motions, see Def.'s Resp. at 14 (first
paragraph), and it is not unfairly prejudicial or otherwise inappropriate under Rule 403.
7.

Use of attorney-client privilege as a sword

Given NP's maintenance of attorney-client privilege during discovery and its
decision not to rely on advice by counsel to rebut Oil-Dri's claim of willfulness, the Court
precludes NP from making any reference to consultation with attorneys, opinions by
attorneys, or any attorney involvement at all with respect to the patents, products, and
events at issue in the trial.
8.

Limiting infringement analysis to certain products

The Court will need to hear further argument on this motion during the final
pretrial conference.

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9.

Reference to the "lightweight" litigation (Case No. 16 C 9179)

Oil-Dri asks the Court to preclude any reference to another patent infringement
lawsuit regarding a different animal litter product that it instituted against NP, specifically
Case No. 16 C 9179. NP claims this evidence is relevant, but it offers only a single
sentence to support this: "The lightweight litter litigation is relevant to damages,
particular to show the existence of an adjudicated non-infringing alternative." Def.'s
Resp. at 17. NP makes no effort at all to explain this. It has forfeited the point, and in
any event it is difficult to imagine any situation in which the probative value of this
evidence would not be substantially outweighed by the danger for confusing the issues,
wasting time on a sidetrack that would require explanation of the other lawsuit, and
unfair prejudice. See Fed. R. Evid. 403. The Court grants Oil-Dri's motion.
Date: March 8, 2019
________________________________
MATTHEW F. KENNELLY
United States District Judge

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