CAPITAL MACHINE COMPANY, INC. et al v. MILLER VENEERS, INC. et al

Filing 258

ENTRY Setting Case Management Deadlines and Addressing Expert Deposition Issue. Signed by Magistrate Judge Debra McVicker Lynch on 10/17/2011. (LH)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
CAPITAL MACHINE COMPANY, INC. and
INDIANA FORGE, LLC,
Plaintiffs,
v.
MILLER VENEERS, INC., et al.,
Defendants.

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) CASE NO. 1:09-cv-00702-JMS-DML
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Entry Setting Case Management Deadlines and
Addressing Expert Deposition Issue
The parties, by counsel, appeared for a telephone conference on September 30, 2011,
with the magistrate judge and made arguments on the case management schedule they believe
should govern the remainder of this case. The parties have supplemented their arguments with
briefs that address both case management and an issue regarding anticipated deposition
questioning of an expert witness. For the reasons explained in section A below, the court is
entering the Phase II case management order docketed along with this entry. The court addresses
the expert deposition issue in section B of this entry.
A.

Case Management
On September 14, 2011, the court made its Markman ruling, determining the scope and

meaning of patent claims disputed by the parties in the six patents-in-suit. (Dkt. 247). The
district judge’s Markman entry requested this magistrate judge to assist the parties in developing
a Phase II Uniform Case Management Plan. The parties have reached agreements on many
components of the Phase II plan, but they have a fundamental disagreement about the parties’
(particularly the defendants’) right to disclose new experts or expert opinions on liability issues.

The parties also could not agree on some other relatively minor issues, including a deadline for
dispositive motions.1
The Uniform Case Management Plan used by most judges in this district for all nondesign patent cases provides for Phase II deadlines to be developed after the court’s Markman
decision and measured from the date of that decision. In essence, the usual plan awaits the
Markman ruling before requiring the parties to make final strategic decisions on important
matters, including pursuit of summary judgment on any issues, reliance on expert opinion for
summary judgment purposes and at trial, and defense of a claim of willful infringement based on
opinion of counsel.
The parties’ case management disputes arise in part from the fact that this case had been
governed by the design patent uniform case management plan that was used for all patent cases
by the original presiding judge. That plan, entered as an order of the court on September 22,
2009 (at Dkt. 50), managed the case with less emphasis on the Markman ruling. It required the
parties to brief summary judgment and Markman issues simultaneously—and thus to conduct
virtually all liability discovery and expert practice in advance of the Markman ruling. As a
result, once the court issued its Markman ruling (and rulings on any summary judgment
motions), the parties effectively would need time only for completing damages discovery before
being ready for trial. Nevertheless, that plan did allow for the possibility that the Markman
ruling would alter the landscape and provided that “[i]f required by the Court’s Markman
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The parties also disagreed about whether the defendants should be given a renewed
opportunity to assert an opinion of counsel defense to willfulness. The issue is moot because, as
the defendants confirmed during the September 30, 2011 conference with the magistrate judge,
they have not raised and do not intend to raise that defense. Indeed, the court earlier denied
certain discovery because of the defendants’ representation that they were not raising the
defense.

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decision, parties can request that supplemental non-damages expert reports and/or additional
summary judgment motion practice be added to the CMP.”
Even though the non-traditional plan originally governed this case, this litigation has not
actually followed the sequencing contemplated by that plan. The parties were not required to
brief summary judgment issues simultaneously with Markman issues, and summary judgment
deadlines have yet to be set by the court.
The change in structure was caused primarily by an issue that led to the disqualification
(and replacement) of the defendants’ counsel. Markman and summary judgment briefing
deadlines were extended in the summer of 2010 (see Dkts. 94, 98). The court then stayed the
Markman and summary judgment briefing deadlines altogether on September 9, 2010 (Dkt. 166,
Dkt. 185), and halted discovery for a period while the defendants obtained new counsel. (Dkt.
191). On October 22, 2010, the court vacated the case management order entered in September
2009 and ordered the parties to meet and confer and file a new plan “based on the Court’s
Uniform Patent CMP” once the defendants’ new counsel entered the case. (Dkt. 191). After
vacating the old CMP, the court set deadlines for Markman briefing, but it did not enter a
schedule for briefing any summary judgment issues. (Dkt. 209). The court also decided, in June
2011, that a “Post-Markman Phase II Case Management Plan” would govern the case after the
Markman ruling. (Dkt. 233). It has taken until today for a new, comprehensive plan to be
entered.
The plaintiffs object to a Phase II plan, like the uniform plan used by the now-presiding
district judge, which permits the defendants the opportunity to designate any new experts or new
expert opinions to be used at trial or for summary judgment liability issues. The plaintiffs assert
that they have relied on the defendants being limited to the liability experts they already have

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identified and for whom reports have been served, and they maintain they would be unfairly
prejudiced if the defendants are permitted to expand their defenses. The court finds, however,
that the just determination of this case requires adoption of a (more or less) standard Phase II
plan.
First, the lynchpin of the plaintiffs’ position is a margin entry that denied the defendants’
July 2010 motion to specify a time for disclosure of trial experts, as opposed to experts on
summary judgment issues—an entry that does not bear the weight the plaintiffs try to load upon
it. (See Dkt. 138). That margin entry—in which the court invited the parties to confer further to
attempt agreement on some relief from the CMP—was entered just before this lawsuit became
focused on and stalled by attorney disqualification issues. In addition, it was grounded in the
former CMP, which the court later vacated in its entry dated October 22, 2010. It was also
entered before the court separated Markman briefing from summary judgment briefing, and
before the court reiterated its decision that a revised CMP should be based on the “traditional”
uniform patent CMP.
Second, even the original CMP allowed for the possibility that the nature of the court’s
Markman ruling would support a party’s request to supplement “non-damages” expert reports or
to make additional summary judgment motions. (“If required by the Court’s Markman decision,
parties can request that supplemental non-damages expert reports and/or additional summary
judgment motion practice be added to the CMP.”) Given the possibility that a Markman
decision might change the parties’ approach to certain liability issues,2 it is not reasonable for a

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The court acknowledges the plaintiffs’ argument that because they have steadfastly
maintained there are no terms in the six patents that required claims construction by the court,
the defendants could not have asserted (under the old CMP) that the Markman ruling required a
change in their strategy or new or supplemental expert opinion. But the court did not adopt
wholesale the defendants’ proffered claims construction, and the plaintiffs were not silent about
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party to rely on an assumption that at the close of Markman briefing, no further development of
liability issues through discovery and expert practice will be permitted.
Third, even though the discovery efforts undertaken in this case have been, according to
the plaintiffs, monumental, the plaintiffs have not provided the court with any basis for believing
that any of that discovery was wasted or must be re-done if the defendants are permitted to
provide new or supplemental expert disclosures on liability issues. The ability to conduct more
discovery will not create undue prejudice here.
Finally, the deadlines in the Phase II Plan now entered as an order of the court are
approaching quickly—quickly enough that the court doubts that the defendants will be able to
“concoct” entirely new theories and send the plaintiffs “on a wild goose chase” or that this case
will turn into a “circus.” (See plaintiffs’ memorandum regarding case management deadlines,
Dkt. 255, at p. 8). The court’s focus is on permitting the parties reasonable opportunity to
prosecute and defend this case on the merits. As the parties will note, the new case management
order is virtually identical to the uniform order, with deadlines tied roughly to the date this order
is issued.3 A trial date and final pretrial conference will be set by separate entry.

proper claims construction. See Markman ruling, Dkt. 247. Several disputes in this case have
arisen from the plaintiffs’ insistence that no claims required construction, leading to an “I
gotcha” argument that the defendants waived a merits issue. That strategy is not persuasive. In
the Markman ruling, the court rejected the parties’ arguments about the other side’s waiver of
claim construction or acceptance of claim construction by default, preferring to reach the merits
so that the court’s ability to satisfy its duty to properly instruct the jury would not be needlessly
frustrated. Dkt. 247 at p. 4. n.3.
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The court notes that the parties’ briefing on deadlines under a Phase II CMP also
addressed whether the defendants properly can amend their Preliminary Invalidity Contentions.
The parties agree that the standard CMP language applies, stating that the defendants may serve
Final Invalidity Contentions without leave of court that amend their Preliminary Invalidity
Contentions if the plaintiffs serve Final Infringement Contentions or if the defendants “believe in
good faith that the Court’s Claim Construction Ruling so requires.” The plaintiffs insist that
neither condition can be met; the defendants disagree. The court declines to enter this fray
prematurely and in a vacuum. The parties can address that matter when, and if, the defendants
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B.

Expert Discovery
The model patent Phase II CMP, which was recently revised in May 2011, contains a

section V titled “Other Matters” that invites the parties’ agreement whether drafts of expert
reports will be retained and produced and whether inquiry will be permitted into “who, if
anyone, other than the expert participated in the drafting of” the expert’s report. In the absence
of agreement on these issues, the model CMP states that drafts do not need to be produced but
inquiry may be had into the persons who participated in drafting the expert’s report. The model
CMP does not expressly acknowledge that new expert disclosure guidelines were adopted in
Rule 26(b)(4) effective in December 2010.
In their proposed case management plans, the plaintiffs and defendants agreed that draft
reports do not need to be exchanged (a position that is consistent with new Rule 26(b)(4)(B)) but
may disagree on whether parties should be permitted to inquire about the drafters of the report
and the extent of their drafting. The plaintiffs argue that to the extent a person who participated
in drafting is a lawyer, then questioning about the extent of the lawyer’s participation is not
permitted under new Rule 26(b)(4)(C), which limits inquiry about communications between a
party’s lawyer and the party’s expert. The plaintiffs do not contest that inquiry regarding any
non-attorney’s participation in drafting the expert report is proper. The defendants have not
addressed the distinction between lawyer-drafters and others. They observe that the reports served
by the plaintiffs’ two experts are virtually identical in their language and the defendants should
be permitted to find out “which of the experts, if any, prepared the identical report.” Lurking
within this is the suggestion that neither expert prepared the report, but that it was drafted by the
plaintiffs’ lawyers.

serve Final Infringement Contentions and the parties are aware of the exact nature of the Final
Infringement Contentions.
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The court agrees with the plaintiffs that to the extent a non-lawyer (such as another expert
or assistant to an expert) participated in the drafting of the report, there is no work product limit
to inquiring about the scope and depth of those persons’ participation in the drafting. The
Committee Notes to the 2010 rules revision creating new 26(b)(4)(C) say precisely that:
“[I]nquiry about communications the expert had with anyone other than the party’s counsel
about the opinions expressed is unaffected by the rule.” The court also agrees with the plaintiffs
that new Rule 26(b)(4)(C) provides work product protection where, in many jurisdictions,
virtually none existed before to protect from disclosure certain communications between a
party’s lawyer and the party’s expert. But some communications must be disclosed. As stated in
Rule 26(b)(4)(C), communications about the following subjects between a lawyer and the expert
must be disclosed:
(i)

those that relate to compensation for the expert’s study or testimony;

(ii)

those that identify facts or data that the party’s attorney provided and that the
expert considered in forming the opinions to be expressed; and

(iii) those that identify assumptions that the party’s attorney provided and that the
expert relied on in forming the opinions to be expressed.
If, in fact, an expert’s report is merely the lawyer’s opinion—such as if the lawyer drafted
the report and the expert merely signed it without substantive revision or input, some inquiry into
the nature of the lawyer’s participation would be appropriate. In those circumstances, questions
about “facts or data” or “assumptions” that the attorney provided and the expert relied on could
reveal the nature of the lawyer’s participation. On the other hand, questioning that attempts to
isolate bits and pieces of an expert’s report as those where the lawyer acted as the wordsmith or
scrivener normally would be prohibited inquiry into the attorney’s work product. One need not
know who wrote the words in an expert report to formulate questions that reveal in detail
whether the facts, assumptions, or opinions expressed in the words are those of the expert or
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someone else’s, including a lawyer’s. See Metavante Corp. v. Emigrant Savings Bank, 619 F.3d
748, 762 (7th Cir. 2010), cert. denied, 131 S.Ct. 1784 (2011) (purpose of expert report is to
provide substance of expert’s opinion so that opponent can rebut, cross-examine, offer
competing expert if necessary, and otherwise prepare intelligently for trial).
It is not possible in a vacuum to state that one may never determine the role that an
attorney played in the preparation of an expert’s report. The line is drawn by the rule and is
applied to specific facts and circumstances. The court directs the parties to the Committee Notes
regarding Rule 26(b)(4)(C) and the scope of communications between lawyer and expert that are
fair game for inquiry and those that are not. The court also reminds the parties that to the extent
that disagreements arise in the course of a deposition, the parties may contact the magistrate
judge by phone to request a ruling.
So ORDERED.
10/17/2011
Date: ___________________

____________________________________
Debra McVicker Lynch
United States Magistrate Judge
Southern District of Indiana

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Distribution:
Cynthia A. Bedrick
MCNEELY STEPHENSON THOPY & HARROLD
[e-mail]
Jennifer M. Frasier
MCNEELY STEPHENSON THOPY & HARROLD
[e-mail]
J. Lee McNeely
MCNEELY STEPHENSON THOPY & HARROLD
[e-mail]
Paul B. Overhauser
OVERHAUSER & LINDMAN, LLC
[e-mail]
Brady J. Rife
MCNEELY STEPHENSON THOPY & HARROLD
[e-mail]
Michael A. Swift
MAGINOT MOORE & BECK LLP
[e-mail]

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