BERRY PLASTICS CORPORATION v. INTERTAPE POLYMER CORPORATION

Filing 503

ORDER granting in part Intertape's 489 Motion in Limine to Exclude Expert Testimony of Dr. Eldridge Mount. Signed by Judge Richard L. Young on 11/30/2015. (TMD)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
EVANSVILLE DIVISION

BERRY PLASTICS CORPORATION,

)
)
)
)
)
)
)
)
)
)

Plaintiff,
vs.
INTERTAPE POLYMER
CORPORATION,
Defendant.

3:10-cv-00076-RLY-WGH

ENTRY ON INTERTAPE POLYMER CORPORATION’S MOTION IN LIMINE
TO EXCLUDE THE EXPERT TESTIMONY OF DR. ELDRIDGE MOUNT
Defendant, Intertape Polymer Corporation, moves for an order in limine excluding
the testimony of Dr. Eldridge Mount, an expert retained by Berry Plastics Corporation
who gave an opinion on the invalidity of the ‘416 patent during the jury trial held in
November 2014. Dr. Mount is currently listed on Berry’s witness list as a “may call”
witness for the inequitable conduct bench trial. (See Filing No. 483). Intertape moves to
exclude his testimony for four reasons: (1) Dr. Mount has no first-hand knowledge of the
facts and circumstances that are at issue for the inequitable conduct claim; (2) Dr. Mount
has not previously disclosed any opinion with respect to the issue of inequitable conduct;
(3) Dr. Mount’s opinions are not relevant and are, in fact, prejudicial on the issue of
inequitable conduct; and (4) Berry’s use of the “may call” designation will require
Intertape to expend time and resources preparing for live testimony on unspecified topics

1

that may never occur. For the reasons set forth below, Intertape’s motion is GRANTED
in part.
I.

Discussion
One of the key issues of Berry’s inequitable conduct trial is whether the claimed

spindle—the double transversal mixing spindle with a plurality of back-cut helical flights
—was sufficiently disclosed as prior art during the prosecution of the ‘416 patent.
Intertape argues the claimed spindle was sufficiently disclosed because the patent states
that double transversal mixing spindles were commercially available, and because the
‘416 patent describes other types of spindles, including back-cut spindles, as being
available alternatives. (See ‘416 patent, col. 4, ll: 50-51) (“Planetary roller extruders
having double transversal spindles 28 are commercially available from Rust-MitschkeEntex.”); see also id., col. 3, ll: 65-col. 4, ll: 1-2) (“The planetary spindles 28, 30 can
exhibit many different tooth geometries, e.g., full helical flights (Planetspindel) 30,
double transversal helical flights (also known as back-cut spindles or Noppenspindel) 28,
or zoned helical flights (Igelspindel), etc.”). Relying in part on the expert report and the
testimony of Dr. Mount, Berry argues the claimed spindle was not sufficiently disclosed
as prior art. In his expert report, Dr. Mount stated:
At no time during the prosecution of the ‘416 patent did the ‘416 patent
applicants make the Examiner aware of the double transversal mixing
spindles’ status in the prior art, including all of the information they had
derived from Entex and Battenfeld regarding their prior art double
transversal mixing planetary spindles.
(Filing No. 258, Expert Report of Eldridge M. Mount, III at 12, ¶ 1). He later testified:

2

Q:

So your – so it’s your opinion that the examiner was not aware that
back-cut mixing elements were aware – or were available in the
prior art at the time of examination of the patent?

A:

That the Noppenspindel wasn’t, which this is addressed to, for which
the ‘416 patent was specifically addressed to.

Q:

It’s your opinion that the ‘416 patent is limited to use of just the
Noppenspindel? . . .

A:

I think it’s difficult to determine which exact spindle it’s limited
to. They describe the use of many different types of spindles. One
of the – may be in four, standard planetary spindle, they have backcut spindles, but the – it’s in the detailed description of the
invention.
So it wasn’t clear, I don’t think, that – the examiner that it was
separate, because why would the examiner have used the ‘462
patent as an example from a twin screw of the back-cut spindle when
she – when the examiner could have used the spindles described here
in the description of the invention.
Yesterday, Dr. Rauwendaal contended that these were all prior art,
but it is in the detailed description of the invention, so I’m not
sure that that’s clear. And because of that, I don’t think the
examiner was working under the presumption that they were prior
art spindles. 1

(Filing No. 275-4 at 266).
Dr. Mount is not an expert in patent law and has no personal knowledge of the
facts and circumstances surrounding the prosecution of the ‘416 patent. Aside from the
above, the court is not clear what more Dr. Mount could add to Berry’s inequitable
conduct claim were he to testify at trial. Neither is Intertape. Thus, on October 29, 2015,

1

Over Intertape’s objection, the court did not strike this last sentence, explaining that his opinion
on whether the examiner understood the spindles described in the patent were prior art spindles
was subject to cross-examination. (Filing No. 312 at 14).

3

Intertape asked Berry on what subjects Dr. Mount may be called to testify. (Filing No.
490-1 at 4). Berry responded:
As you know, the fact witnesses relating to the inequitable conduct in
procuring the ‘416 patent are Intertape’s employees and counsel. Intertape
has identified Tynan, St. Couer [sic] and Kovach as witnesses it will call.
Berry does not control these witnesses, thus Berry is unsure what new
excuses they may proffer regarding concealment and/or misrepresentation
of material information. Dr. Mount may be called to provide expert
testimony regarding [the inventors’] testimony or interpretation of prior art.
Thus, we do not presently know whether Dr. Mount will be called, or on
what particular subjects.
(Id. at 3). Intertape understood Berry’s response as representing that “Dr. Mount will
only be called if need [sic] to rebut new testimony from Intertape’s witnesses that is
different from their prior deposition and/or trial testimony.” (Id.). Berry did not agree
with that interpretation, and stated that because Berry did not know what issues will arise
at trial, it “cannot tell [Intertape] what testimony we may need or want from Dr. Mount’s
expert perspective.” (Id. at 2). The court understands Berry’s position, but it leaves
Intertape in the precarious position of trying to anticipate what might be asked based
upon what might be said at trial.
In an effort to resolve this issue, Intertape states that it has no objection to Berry’s
designation of Dr. Mount as a “may call” witness if Berry would confirm that it identified
Dr. Mount as a “may call” witness to respond to new testimony on topics which
Intertape’s witnesses did not testify to in their depositions or at the prior jury trial.
Intertape’s proposed resolution makes sense. Dr. Mount testified at length regarding his
interpretation of the prior art. (See Filing No. 399). There is no reason to cover that
testimony once again.
4

II.

Conclusion
The court finds Dr. Mount can remain on Berry’s witness list as a “may call”

witness. Dr. Mount may testify only with respect to new topics which Intertape’s
witnesses did not testify to in their depositions or at the prior jury trial. Intertape’s
Motion in Limine (Filing No. 489) is therefore GRANTED in part.

SO ORDERED this 30th day of November 2015.

__________________________________
RICHARD L. YOUNG, CHIEF JUDGE
United States District Court
Southern District of Indiana

Distributed Electronically to Registered Counsel of Record.

5