Kimberly-Clark Worldwide Inc v. First Quality Products Inc et al

Filing 1047

MEMORANDUM and ORDER: Upon consideration of KCs motion in limine 891 , and pursuant to the accompanying memorandum, it is ORDERED that said motion is DENIED. Signed by Honorable William W. Caldwell on 12/9/13. (ma)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
KIMBERLY-CLARK WORLDWIDE, INC.,
Plaintiff

:
: CIVIL NO. 1:09-CV-1685

v.
:
FIRST QUALITY BABY PRODUCTS, LLC,
FIRST QUALITY PRODUCTS, INC.,
FIRST QUALITY RETAIL SERVICES, LLC,
FIRST QUALITY HYGIENIC, INC.,
Defendants and
Counterclaim Plaintiffs
v.

:
:
:
:

KIMBERLY-CLARK CORPORATION,
KIMBERLY-CLARK WORLDWIDE, INC.,
KIMBERLY-CLARK GLOBAL SALES, LLC,
Counterclaim Defendants

:
:

MEMORANDUM
I.

Introduction
Presently before the court is a motion in limine (Doc. 891) filed by Plaintiff

Kimberly-Clark Worldwide, Inc. (“KC”) on October 11, 2013. In the motion, KC requests
that the court preclude Daniel Gardner, a purported technical expert for Defendants First
Quality Baby Products, LLC, First Quality Products, Inc., First Quality Retail Services,
LLC, and First Quality Hygienic, Inc. (collectively, “FQ”), from testifying at trial regarding a
“belatedly offered” and “new” opinion on the validity of certain patents at issue in this
infringement action. Specifically, KC contends that the court should preclude Mr.
Gardner–pursuant to Federal Rule of Civil Procedure 37(c)(1)–from testifying about his
“second” obviousness opinion because it was not disclosed to KC in a timely fashion.
(Doc. 891 at 2-3).

FQ opposes the motion. The matter has been fully briefed (Docs. 892, 962,
1010) and is ripe for our review. For the reasons that follow, we will deny KC’s motion.
II.

Legal Standard
Federal Rule of Civil Procedure 26(a)(2) requires a party to disclose its

expert witnesses, their opinions, and the facts upon which the opinions are based “at the
times and in the sequence that the court orders.” Fed. R. Civ. P. 26(a)(2)(D). Pursuant to
Rule 37(c)(1), “[i]f a party fails to provide information or identify a witness as required by
Rule 26(a) or (e),” the court may sanction that party, typically by prohibiting it from relying
on the undisclosed information or witness, “unless the failure was substantially justified
or is harmless.” Fed. R. Civ. P. 37(c)(1).
In deciding whether this sanction is warranted, we consider the following
factors:
(1) the prejudice or surprise in fact of the party against whom the excluded
witnesses would have testified, (2) the ability of that party to cure the
prejudice, (3) the extent to which waiver of the rule against calling unlisted
witnesses would disrupt the orderly and efficient trial of the case or of other
cases in the court, and (4) bad faith or willfulness in failing to comply with the
court’s order.
Meyers v. Pennypack Woods Home Ownership Ass’n, 559 F.2d 894, 904-05 (3d Cir.
1977), overruled on other grounds by Goodman v. Lukens Steel Co., 777 F.2d 113 (3d
Cir. 1985). The “importance of the excluded testimony” should also be considered.
Konstantopoulos v. Westvaco Corp., 112 F.3d 710, 719 (3d. Cir. 1997) (quoting Meyers,
559 F.2d at 904).

2

III.

Discussion
This litigation concerns patents relating to disposable absorbent products,

such as diapers and incontinence products. The patents-in-suit cover a variety of the
components or features of these products, including the configuration of internal elastics
for protection against leakage.
Mr. Gardner, a purported technical expert retained by FQ, authored a report
challenging the validity of four of KC’s patents at issue in this litigation (U.S. Patent Nos.
5,749,922; 6,098,203; 6,260,211; and 7,000,260) (collectively, the “Rajala Patents”). In
the June 15, 2012 report, Mr. Gardner opined that European Patent Application No.
0626161A1 to Suzuki et al. (“Suzuki”) invalidates the Rajala Patents under theories of
anticipation and obviousness.1
KC deposed Mr. Gardner in May of 2013, and subsequently cited portions
of his deposition testimony in support of its motion for summary judgment on the issue of
the validity of the Rajala Patents. (Doc. 810). FQ opposed the motion and filed a
supplemental declaration of Mr. Gardner on July 22, 2013 (Doc. 826) to clarify the
deposition testimony of Mr. Gardner that FQ contended was mischaracterized in KC’s
filings. By memorandum dated August 12, 2013 (Doc. 833), the court denied KC’s motion

As the court previously explained (Docs. 833 at 3-4; 862 at 3), “anticipation”
and “obviousness” are terms of art. In order to establish anticipation, the party
challenging the validity of the patent must prove that every claim limitation is found in
a single prior art reference, either expressly or inherently. Transclean Corp. v.
Bridgewood Servs., Inc., 290 F.3d 1364, 1370 (Fed. Cir. 2002). To determine whether
a patent is invalid for obviousness, one must examine whether “the difference
between the claimed invention and the prior art are such that the claimed invention as
a whole would have been obvious . . . to a person having ordinary skill in the art[.]” 35
U.S.C. § 103.
1

3

after finding genuine factual disputes regarding both anticipation and obviousness, and,
therefore, the validity of the Rajala Patents. KC moved for reconsideration of the
summary judgment decision, and the court denied KC’s request by memorandum dated
October 7, 2013. (Doc. 862).
In the instant motion, KC seeks to exclude a “new” opinion offered by Mr.
Gardner in his July 22, 2013 declaration, claiming that it was not included in his original
June 2012 expert report. Specifically, KC argues that his original report contained one
opinion on obviousness, which KC characterizes as follows: “it would have been obvious
to cut two elastics in the Suzuki reference to have separate leg and crotch elastics.”
(Doc. 891 at 2) (emphasis added).2 KC contends that the declaration contains a new
opinion on obviousness, which KC characterizes this way: “it would have been obvious to
replace two leg elastics disclosed in Suzuki with four total elastics, two leg elastics and
two crotch elastics.” (Id.) (emphasis added).3 FQ, in turn, contends that Mr. Gardner

KC did not provide a complete copy of the Mr. Gardner’s expert report in
support of its motion. The excerpts KC did provide indicate that Mr. Gardner opined
that if KC asserts that the Rajala Patents require the second and third elastics to be
“separate elastic members,” it would have been obvious to sever two elastic members
in the crotch region of the Suzuki reference to create separate leg and crotch elastics.
(Doc. 892-1 at 7-8).
2

3

KC cites to two paragraphs of Mr. Gardner’s declaration as the source of this
“new” opinion. The language of KC’s characterization is not contained in those
paragraphs. Instead, Mr. Gardner’s declaration states:
I indicated during my deposition that I would not necessarily cut the
elastic of Suzuki since that elastic already provided a continuous seal.
However, if the manufacturing process was such that the seal could
not readily be made without using a separate elastic, it would be
obvious to use a separate elastic. In other words, Suzuki shows an
elastic configuration that provides a continuous seal around the leg
and crotch regions. I explained that a continuous seal would be the
4

simply explained his original opinion during the course of his deposition and subsequent
declaration, and that he did not offer any “new” opinion. (Doc. 962 at 6-7).
Upon consideration of the foregoing, the court concludes that KC has failed
to demonstrate that Mr. Gardner belatedly offered a “new” expert opinion that was not
previously disclosed. A review of the record as submitted by KC demonstrates that Mr.
Gardner originally opined that it would have been obvious to a person skilled in the art to
utilize separate crotch and leg elastics in the manner claimed in the Rajala Patents.
When subsequently deposed on the issue, Mr. Gardner reiterated this position and
emphasized that if the manufacturing process permitted, using separate elastics would
be preferred (for improved leakage protection) to cutting existing elastics into separate
elastics. In short, Mr. Gardner expounded on his opinion when expressly questioned
about it, but did not belatedly proffer any new opinion.
Under these circumstances, the court does not find the sort of prejudice to
KC nor bad faith from FQ which would warrant excluding Mr. Gardner’s proposed
testimony under Rule 37(c)(1). See Meyers, 559 F.2d at 904. Accordingly, we will deny
KC’s motion requesting such exclusion.

“preferred design.” However, as I noted above, if one’s manufacturing
process was such that there was a benefit to using a separate piece
of crotch elastic to form a continuous seal around the leg openings, a
person of skill in the art would do that.
(Doc. 826 at 5-6) (internal citations omitted).
5

IV.

Conclusion
For the reasons discussed above, we conclude that KC’s motion in limine

(Doc. 891) should be denied. We will issue an appropriate order.

/s/ William W. Caldwell
William W. Caldwell
United States District Judge
December 9, 2013

6

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA

KIMBERLY-CLARK WORLDWIDE, INC.,
Plaintiff

:
: CIVIL NO. 1:09-CV-1685

v.
:
FIRST QUALITY BABY PRODUCTS, LLC,
FIRST QUALITY PRODUCTS, INC.,
FIRST QUALITY RETAIL SERVICES, LLC,
FIRST QUALITY HYGIENIC, INC.,
Defendants and
Counterclaim Plaintiffs
v.

:
:
:
:

KIMBERLY-CLARK CORPORATION,
KIMBERLY-CLARK WORLDWIDE, INC.,
KIMBERLY-CLARK GLOBAL SALES, LLC,
Counterclaim Defendants

:
:

ORDER
AND NOW, this 9th day of December, 2013, upon consideration of KC’s
motion in limine (Doc. 891), and pursuant to the accompanying memorandum, it is
ORDERED that said motion is DENIED.

/s/ William W. Caldwell
William W. Caldwell
United States District Judge