Exmark Manufacturing Company Inc. v. Briggs & Stratton Power Product Group
ORDER - The plaintiff's Motion to Strike New Expert Opinions of Mark Wegner as Untimely Under the Amended Scheduling Order (Filing No. 237 ) is granted as set forth in this Order. Pursuant to NECivR 72.2 any objection to this Order shall be filed with the Clerk of the Court within fourteen (14) days after being served with a copy of this Order. Failure to timely object may constitute a waiver of any objection. Ordered by Magistrate Judge Thomas D. Thalken. (GJG)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
EXMARK MANUFACTURING CO.
BRIGGS & STRATTON POWER
PRODUCTS GROUP, LLC and
SCHILLER GROUNDS CARE, INC.,
This matter is before the court on the plaintiff’s, Exmark Manufacturing Co., Inc.
(Exmark), Motion to Strike New Expert Opinions of Mark Wegner as Untimely Under the
Amended Scheduling Order (Filing No. 237). Exmark filed a brief (Filing No. 238) and
index of evidence (Filing Nos. 239 and 240) in support of the motion. The defendant,
Schiller Grounds Care, Inc. (Schiller), filed brief (Filing No. 251) in response.1 Exmark filed
a brief (Filing No. 252) in reply.
This action pertains to the alleged infringement of United States Patent No.
5,987,863 (the ʼ863 patent), which covers a lawn mower having flow control baffles. See
Filing No. 14 - Amended Complaint p. 1-4. Exmark alleges the defendants are knowingly
and actively engaging in the manufacture and sale of similar mowers that are covered by
the ʼ863 patent. Id. Schiller admits Exmark is the owner of the ʼ863 patent, but denies any
infringement and generally argues Exmark knowingly misrepresented or withheld material
information with the intent to deceive the United States Patent and Trademark Office
(PTO). See Filing No. 57 - Amended Answer p. 2-3, 10-11.
On September 1, 2011, the court held a Markman hearing. See Filing No. 141 Text Minute Entry. As relevant to this motion, and as summarized by the parties, Schiller
argued for alternative interpretations of the term “adjacent.” See Filing No. 238 - Brief p. 3;
Filing No. 251 - Response p. 3. Schiller argued for two items to be “adjacent,” the items
must be touching each other. See Filing No. 238 - Brief p. 3 (citing Filing Nos. 111, 114,
The defendant, Briggs & Stratton Power Products Group, LLC, did not participate in this motion.
and 127); Filing No. 251 - Response p. 3. Schiller alternatively argued two items are
“adjacent” if the items were near each other with nothing in between the items. See Filing
No. 238 - Brief p. 3; Filing No. 251 - Response p. 3; Filing No. 239-3 Ex. 2 - Markman Hrg.
Tr. p. 42. Following the hearing, on November 29, 2011, the court entered a Memorandum
and Order resolving several claim construction issues in the disputed patent. See Filing
No. 156 - Memorandum and Order. Regarding the term “adjacent,” the court determined:
The court finds no support for defendants’ proposed
construction and finds no construction of this term is necessary.
The meaning is relatively clear in the context of the patent as a
whole. The word “adjacent” refers to parts that are near one
another, but it does not require touching.
There is a
presumption that words in a claim mean the same thing. See
PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1366 (Fed. Cir.
The word “adjacent” is used throughout the
specification to mean “near.”
There is nothing in the
prosecution history that justifies a change from the ordinary
meaning of adjacent, and the court will not do so.
Id. at 8-9.
Thereafter, on May 8, 2012, on the parties’ motion, the court stayed this case while
the PTO considered and decided two patent reexaminations the defendants initiated to
challenge the validity of the ʼ863 patent. See Filing No. 197 - Order. On August 27, 2014,
the parties filed a joint status report indicating the PTO “issued a Notice of Intent to Issue
Ex Parte Reexamination Certificate confirming the patentability of the asserted claims of
the patent in suit.” See Filing No. 214. The court lifted the stay on August 28, 2014, and
held a telephone conference on September 3, 2014, to discuss progression of the case.
See Filing No. 215 - Text Order. The parties disagreed on the scope of supplemental
See Filing No. 238 - Brief p. 4-5; Filing No. 251 - Response p. 5.
According to Exmark’s counsel, during the conference, “Schiller admitted to the Court the
reason Schiller did not want the Court to adopt [Exmark’s limitation on supplementing
expert reports] was because the new material and non-infringement argument Schiller
wanted to add regarding ‘adjacent’ would not fall within that language.” See Filing No.
239-7 Ex. 5 - Winkels’ Nov. 6, 2014, Letter.2 In the second amended progression order,
the court adopted Exmark’s proposed limitation on supplementation as follows:
Schiller did not contest Exmark’s counsel’s representation in Schiller’s response to the instant
supplementation shall be reasonably related to events occurring, and/or discovery
provided, subsequent to issuance of the original expert reports, and the parties shall have
the right to object to supplementation that is not so limited as untimely.” See Filing No.
217 - Second Amended Order Setting Final Schedule for Progression of Case.3
Schiller served Mark J. Wegner’s (Mr. Wegner) supplemental expert report on
November 3, 2014. See Filing No. 239-2 Ex. 1 - Wegner’s Supp. Expert Report. Mr.
Wegner included within the supplemental report an opinion on what constitutes “adjacent”
as used in the ’863 patent. Id. ¶¶ 32-36, 53-54. Specifically, Mr. Wegner opined,
[A] person of ordinary skill in the art, after reviewing how the
term “adjacent” is used within the ’863 patent, would
understand that two components are not “adjacent” if they are
not immediately next to each other. That is, two components
are not “adjacent” if there is a separate component between the
two referenced components.
Id. Mr. Wegner stated his “notion of ‘adjacency,’ which is supported by the specification of
ʼ863 patent, was confirmed by Exmark during the reexamination.” Id.
On December 3, 2014, Exmark filed the instant motion seeking to strike paragraphs
32 through 36, 53, and 54 of Mr. Wegner’s supplemental expert report that pertain to Mr.
Wegner’s new opinion of the term “adjacent.” See Filing No. 237 - Motion.4 Exmark
contends Mr. Wegner’s report presents a new opinion of the patent term “adjacent” that
was never mentioned in his original report and contradicts the court’s construction of
Exmark argues the referenced portions of Mr. Wegner’s report are
untimely because the paragraphs exceed the scope of permissible supplementation under
the court’s progression order. See Filing No. 238 - Brief. Exmark asserts Mr. Wegner’s
alleged support for his opinion is insufficient to render his opinion within the scope of the
Lastly, Exmark requests the court award fees and
expenses associated with filing this motion. Id.
Schiller argues Mr. Wegner’s supplemental opinion does not contradict the court’s
claim construction findings and is within the scope of the court’s scheduling order. See
Filing No. 251 - Response. Schiller contends Mr. Wegner’s supplemental opinion merely
The parties refer to the Amended Order Setting Final Schedule for Progression of Case (Filing No.
216). The court amended Filing No. 216 to properly reflect the deadlines and did not otherwise change the
scope of supplementation. Compare Filing No. 216 ¶ 3 with Filing No. 217 ¶ 3.
The court notes the parties attempted to reach an agreement on this issue before Exmark filed its
contains his understanding of the term “adjacent,” as a person with ordinary skill in the art,
which will aid the jury in determining a question of fact. Id. Schiller further argues Mr.
Wegner’s opinion in the supplemental report is reasonably related to events that occurred
during the patent reexaminations, specifically statements made by Exmark’s counsel. Id.
Schiller argues Mr. Wegner used Exmark’s assertion the word “between” should be
construed based on its “typical usage” to offer his opinion about “adjacent.” Id.
In reply, Exmark reiterates Mr. Wegner’s supplemental opinion of “adjacent”
improperly attempts to re-construe the claim construction already decided by the court.
See Filing No. 252 - Reply. Exmark argues there is no support for Schiller’s argument that
Mr. Wegner can testify about his infringement comparison based on a claim construction
that is different from the court’s claim construction. Id. Exmark also reiterates there is no
rational relationship between Exmark’s statements about the term “between” during the
reexaminations and Mr. Wegner’s new opinion of the term “adjacent.” Id.
Federal Rule of Civil Procedure 16 provides “the court may issue any just orders,
including those authorized by Rule 37(b)(2)(A)(ii)-(vii), if a party or its attorney . . . fails to
obey a scheduling or other pretrial order.” Fed. R. Civ. P. 16(f)(1)(C). Federal Rule of Civil
Procedure 37, in turn provides that if a party “fails to obey an order to provide or permit
discovery . . . the court where the action is pending may issue further just orders”
including, “prohibiting the disobedient party from supporting or opposing designated claims
or defenses, or from introducing designated matters in evidence.”
Fed. R. Civ. P.
37(b)(2)(A)(ii). “Rule 37(b)(2)(A) vests courts with broad discretion to issue sanctions for
failure to comply with discovery orders.” Arctic Cat Inc. v. Bombardier Recreational
Prods., Inc., No. 12-2692, 2014 WL 4055362, at *4 (D. Minn. Aug. 14, 2014) (citation
The court agrees with Exmark, the cited portions of Mr. Wegner’s supplemental
report do not comply with the court’s restrictions on supplementation.
opinion of the term “adjacent” is not “reasonably related to events occurring, and/or
discovery provided, subsequent to issuance of the original expert reports[.]” Schiller has
not identified a reasonable relation between Exmark’s counsel’s discussion of the term
“between” during the reexamination and Mr. Wegner’s new opinion of the term “adjacent.”
Excepting Schiller’s conclusory statement Mr. Wegner’s opinion of “adjacent” is related to
Exmark’s counsel discussion of the term “between,” Schiller offers no additional support or
explanation for Mr. Wegner’s opinion.
Accordingly, because Mr. Wegner’s opinion in
paragraphs 32 through 36, 53, and 54 are not within the scope of the supplementation
limitation, his opinions are untimely and will be stricken. In light of the court’s decision to
strike the paragraphs as untimely, the court will not address the parties’ contention Mr.
Wegner’s opinion contradicts the court’s claim construction and the law of the case.
Furthermore, the reexamination of the court’s Markman Order is not properly before this
Exmark’s request for fees and expenses is denied. The striking of paragraphs 32
through 36, 53, and 54 is a sufficient sanction. See Fed. R. Civ. P. 37 (“[T]he court must
order the disobedient party, the attorney advising that party, or both to pay the reasonable
expenses, including attorney’s fees, caused by the failure, unless the failure was
substantially justified or other circumstances make an award of expenses unjust.”)
(emphasis added). Upon consideration,
IT IS ORDERED:
The plaintiff’s Motion to Strike New Expert Opinions of Mark Wegner as Untimely
Under the Amended Scheduling Order (Filing No. 237) is granted as set forth in this Order.
Pursuant to NECivR 72.2 any objection to this Order shall be filed with the Clerk of
the Court within fourteen (14) days after being served with a copy of this Order. Failure to
timely object may constitute a waiver of any objection. The brief in support of any
objection shall be filed at the time of filing such objection. Failure to file a brief in support
of any objection may be deemed an abandonment of the objection.
Dated this 6th day of January, 2015.
BY THE COURT:
s/ Thomas D. Thalken
United States Magistrate Judge
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