Kadant Johnson, Inc v. D'Amico et al
Filing
584
ORDER and REASONS denying 330 Motion in Limine; finding as moot 538 Motion in Limine. Signed by Judge Helen G. Berrigan on 06/07/2012. (Reference: 11-0036)(kac, ) .
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
KADANT JOHNSON INC.,
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VERSUS
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JOSEPH V. D’AMICO, LOUISIANA
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STEAM EQUIPMENT, LLC and
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UTILITIES OPTIMIZATION GROUP, *
LLC
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CIVIL ACTION NO. 10-CV-02869
C/W 11-CV-0036 (refers to 11-0036)
(REFERS TO CASE NO. 11-CV-0036)
JUDGE: HELEN G. BERRIGAN
MAG. JOSEPH C. WILKINSON, JR.
ORDER AND REASONS1
Before the Court are two Motions: Motion In Limine to Exclude Expert Testimony of Dr.
Itzhak Green on Infringement Under Doctrine of Equivalents; and Combined Motion In Limine
and Memorandum in Support to Exclude Testimony of Dr. Itzhak Green on Infringement of
“Housing” Claim Element.” Rec. Docs. 330, 538. Plaintiff, Kadant Johnson, opposes the Motion
to Exclude because the written report complied with the Federal Rules of Civil Procedure 26(a).
Rec. Docs. 407, 549. Having reviewed the memoranda of counsel, the record, and the law, the
Court DENIES the first Motion and orders that the second Motion is MOOT.
BACKGROUND
1
Adreanne Stephenson, a student at the University of Notre Dame Law School, assisted
in preparing this order.
Defendants’ accused product, the PTS rotary joint (“PTS”), allegedly infringed Plaintiff’s
federally registered U.S. Patent No. 5,098,135 (“the ‘135 Patent’”). Rec. Doc. 512 at 3-4. To
prove patent infringement, the accused and the allegedly infringed product must satisfy one of
two tests: literal or “doctrine of equivalents” infringement. Rec. Doc. 330-1 at 1-2. For literal
infringement, the patent holder must show that “every limitation of the patent claim is present as
an element of the accused device.” Id. at 2; Romag Fasteners, Inc. v. Mitzi Int’l Handbag and
Accessories, Ltd., 323 F. Supp. 2d 512, 518 (S.D.N.Y. 2004) (citations omitted). Under the
“doctrine of equivalents” test, patent infringement may be found if the differences between the
claimed invention and the accused device are “insubstantial.” Rec. Doc. 330-1 at 2. With
respect to each individual element in dispute, the patent holder must show that the accused
product performs substantially the same function, in the substantially the same way, to give
substantially the same result. Id.
Defendants claim that the Plaintiff’s expert, Dr. Green, only addressed literal
infringement and not infringement by the doctrine of equivalents. Id. at 2-3. Therefore, Dr.
Green should be precluded from offering any testimony on the doctrine of equivalents analysis at
trial. Id. at 3. Defendants state that the doctor “need[ed] to opine that there [were] ‘insubstantial’
differences between the two structures” to show the products were substantially the same. Id.
Plaintiff argues that the doctor does provide analysis for the doctrine of equivalents and any
preclusion issues should be handled at trial. Rec. Doc. 407 at 3-5.
LAW AND ANALYSIS
Under 26(a)(2)(B) of the Federal Rules of Civil Procedure, a written report must be
prepared when a party subpoenas a witness for expert testimony. Under 26(a)(2)(B)(I), the
report must contain “a complete statement of all opinions the witness will express.” The fact
that subjects were not fully addressed may reflect on the weight of the testimony, but not on the
admissibility or preclusion of the evidence. Wagoner v. Exxon Mobil Corporation, 813 F. Supp.
2d 771, 810 (E.D. La. 2011). The testimony of an expert witness is also not “strictly limited to
the content of his report.” Stacey v. Bangor Punta Corp., 107 F.R.D. 786, 789 (D. Me. 1985).
Six factors that are used to analyze whether an expert’s testimony should be limited are: 1) if the
expert testified to opinions or data on content not disclosed in his pretrial discovery testimony; 2)
the content should have been disclosed; 3) the testimony surprises the opposing party; 4) it
causes unfair prejudice; 5) it could not have been reasonably anticipated; or 6) the issue is only
ameliorated if excluded. Id. None of these factors apply here.
Defendants are correct that most of Dr. Green’s report dealt with his belief that the PTS
literally infringed the ‘135 Patent, a conclusion made irrelevant by the Court’s subsequent
Markman ruling. Nonetheless, Dr. Green’s report complies with Rule 26(a)(2)(B)(I) by
providing a complete statement of all opinions including data on literal and doctrine of
equivalents infringement. Defendant claims that Dr. Green does not compare the components
and structure of the ‘135 Patent and Defendants’ PTS rotary joints; this is not true. Dr. Green
states that Plaintiff and Defendant may have different support components but “in [his] opinion,
the PTS ring bracket performs substantially the same function, in substantially the same way, to
achieve substantially the same result–which is to support the PTS housing in coaxial
alignment....” Rec. Doc. 330-5 at 15. This is an exact reference to the “doctrine of equivalents.”
Id. Furthermore, in Table 2, Dr. Green “in [his] opinion, [stated] that PTS rotary joint includes
all the components” of the ‘135 Patent and he points out each features’ similarities. Id. at 16.
For example, both joints have a “self-aligning seal” and springs between the housing toward the
wear plate. Id. Finally, the doctor states that Defendants joints are “similar in general structure
to the [Plaintiff’s] rotary joint.” Id. at 20. The content of Dr. Green’s report was disclosed
properly, was not surprising or prejudicial, and was reasonably anticipated as to not be excluded.
Therefore, the expert should be allowed to testify on the doctrine of equivalents.2
Similarly, Dr. Green recognized that the Court had not made a final decision before his
report on the meaning of several terms. Rec. Doc. 549-2 at 4. He further suggests that PTS’
housing support with end caps or without end caps is incidental and functions in substantially the
same way as the ‘135 Patent, again another opinion relating to the doctrine of equivalents.
Accordingly,
IT IS ORDERED that the Defendants’ Motion to Limine to Exclude Dr. Green’s Expert
Testimony on Doctrine of Equivalents is DENIED. Rec. Doc. 330.
IT IS FURTHER ORDERED that the Motion to Exclude Testimony on the “Housing”
Element is MOOT as it involves a subcategory of the issue disposed of in the immediately
preceding Order. Rec. Doc. 538.
New Orleans, Louisiana, this 7th day of June, 2012.
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HELEN G. BERRIGAN
UNITED STATES DISTRICT JUDGE
2
The Court does note that any testimony as to literal infringement is excluded.
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