FORTA CORPORATION v. SURFACE-TECH, LLC et al

Filing 97

MEMORANDUM OPINION & ORDER indicating that the Court having participated in the Markman Hearing in this action, and upon consideration of the Defendants' Motion to Strike Certain Portions of Plaintiff's Expert Testimony and Hearing Exhibits Presented at the 11/11/14 Claim Construction Hearing 89 , Defendants' Brief in Support of same 90 , Plaintiff's Brief in Opposition 91 , Defendants' Reply Brief 93 , the Special Master's Report and Recommendation 94 , Defe ndants' Objections thereto 95 , and Plaintiff's Responsive Brief 96 , it is hereby ordered that Defendants' Objections are overruled; that, upon de novo review, the Special Master's Report and Recommendation is adopted as the o pinion of the Court, with the exception that Defendants shall have fourteen days to submit a supplemental expert report, rather than the recommended ten; that Defendants' Motion is granted, only to the extent Defendants seek to file a supplemental expert report directly rebutting the testimony and exhibits addressed above and is denied in all other respects; that said supplemental report shall be filed by 3/19/15. Signed by Judge Nora Barry Fischer on 3/5/15. (jg)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
FORTA CORPORATION,

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Plaintiff,
v.
SURFACE-TECH, LLC, JAS COMPANY,
LLC, AND JOE STURTEVANT.
Defendants.

Civil Action No. 13-1608
Hon. Nora Barry Fischer

MEMORANDUM OPINION AND ORDER
I.

PROCEDURAL BACKGROUND1

In this action, Plaintiff, Forta Corporation (hereinafter “Forta”), has sued Defendants,
Surface-Tech, LLC, JAS Company, and Joe Sturtevant (collectively “Defendants”), for
infringement of United States Patent Nos. 8,114,514 and 8,142,889.

The Court held a

Technology Tutorial and Claim Construction Hearing (hereinafter the “Markman Hearing”) on
November 12, 2014, with Special Master John W. McIlvaine, III, Esq., presiding.
In preparation for the Markman Hearing, and pursuant to Rule 4.2 of the Local Patent
Rules (hereinafter “LPR”), the parties submitted a joint disputed claims chart, identifying twelve
disputed terms from each patent-in-suit, on September 12, 2014.

(Docket No. 73).

On

September 26, 2014, Plaintiff submitted its opening claim construction brief and identification of
extrinsic evidence, pursuant to LPR 4.3. (Docket Nos. 75, 76). Attached to this opening brief
was the affidavit of Tara Y. Meyer, Ph.D. (Docket No. 75-17). While this affidavit references

1

A more in-depth procedural background of this action is included in the Special Master’s Report and
Recommendation for this Motion. (Docket No. 94). For brevity and, discerning no objections to the Special
Master’s recitation, the Court recites only the most salient points here.

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Dr. Meyer’s “attached curriculum vitae[,]” (“CV”) it is undisputed that same was not actually
attached.
Defendants filed a responsive claim construction brief and identification of extrinsic
evidence, including the affidavit and CV of Defendants’ expert, Martin I. Jacobs, Ph.D. (Docket
Nos. 78, 78-12, 79).

Plaintiff filed a reply brief and identification of additional extrinsic

evidence, which did not include a supplemental affidavit of Dr. Meyer. (Docket Nos. 80, 81).
Thereafter, Defendants submitted their sur-reply brief and identification of extrinsic evidence,
which did include a supplemental affidavit of Dr. Jacobs. (Docket Nos. 83, 83-1, 84).
The Markman Hearing occurred on November 12, 2014. At 7:39 p.m. on November 11,
2014, Plaintiff produced to Defendants, via email, a copy of Dr. Meyer’s CV for the first time.
(Docket No. 91-1). Dr. Meyer’s CV was not entered onto the record until the Markman Hearing.
(See Plaintiff’s Hr’g Ex. 6).
At the Markman Hearing, both parties elicited testimony from their experts. Portions of
Dr. Meyer’s testimony appeared to be responsive to Dr. Jacobs’ affidavits. Defendants objected
to these portions of Dr. Meyer’s testimony, (Docket No. 89), as well as a hand-drawn graph Dr.
Meyer created while testifying, Plaintiff’s Hr’g Ex. 8, (Docket No. 89-5).
Following the hearing, the Court ordered the parties to contact the Special Master
regarding whether they desired to file supplemental briefing on the objections placed on the
record at the Markman Hearing. (Docket No. 86). Upon contacting the Special Master and
receiving a briefing schedule from the Court, Defendants filed a Motion, (Docket No. 89), which
was referred to the Special Master to prepare a Report and Recommendation. The Motion being
fully briefed, Special Master McIlvaine filed his Report and Recommendation with the Court on
January 28, 2015. (Docket No. 94). Defendants objected to same on February 11, 2015.

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(Docket No. 95). Plaintiff responded on February 18, 2015. (Docket No. 96). The Motion and
Objections being fully briefed, the Court now considers same.
II.

LEGAL STANDARDS

Rule 53(f)(3) of the Federal Rules of Civil Procedure provides:
The court must decide de novo all objections to findings of fact
made or recommended by a master, unless the parties, with the
court’s approval stipulate that:
(A) the findings will be reviewed for clear error; or
(B) the findings of a master appointed under Rule 53(a)(1)(A) or
(C) will be final.
FED.R.CIV.P. 53(f)(3). Rule 53(f)(4) requires the court to “decide de novo all objections to
conclusions of law made or recommended by a master.” FED.R.CIV.P. 53(f)(4). As the parties in
this action did not stipulate that the Special Master’s findings would be reviewed for clear error
or that his findings would be final, the Court’s review of the Defendants’ Objections is de novo.
Rule 16(f) relevantly states:
(f) Sanctions.
(1) In General. On motion of on its own, the court may issue any
just orders, including those authorized by Rule 37(b)(2)(A)(ii)–(iv)
if a party or its attorney:
***
(C) fails to obey a scheduling or other pretrial order.
FED.R.CIV.P. 16(f).
The decision to exclude evidence under Rule 37 is within the discretion of the trial court.
See, e.g., In re Paoli R.R. Yard PCB Litig., 35 F.3d 717, 791 (3d Cir. 1994) (citing Semper v.
Santos, 845 F.2d 1233, 1237 (3d Cir. 1988)). To determine whether exclusion is appropriate for
the failure of a party to comply with pretrial orders, a court should consider the following
factors: “1) prejudice or surprise to the opposing party; 2)the ability of the opposing party to cure
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the prejudice; 3) the disruption of the orderly and efficient trial of the case; 4) bad faith or
willfulness; and 5) the importance of the evidence.” In re Zoloft (Setraline Hydrochloride Prods.
Liab. Litig., No. 12-MD-2342, 2015 WL 115486 at *1 (E.D.Pa. Jan. 7, 2015) (citing ZF Meritor,
LLC v. Eaton Corp., 696 F.3d 254, 298 (3d Cir. 2012) and In re Paoli R.R. PCB Litig., 35 F.3d at
791); see also Konstantopoulos v. Westvaco Corp., 112 F.3d 710, 719 (3d Cir. 1997).
This Court has previously held that “a showing of prejudice is required to grant any
relief, and prejudice will likely not be found if the party is held to have had sufficient notice of
the argument.” Wonderland Nurserygoods Co. v. Thorley Indus., LLC, No. 12-196, 2013 WL
2471801 at *3 (internal quotes and citation omitted).
ANALYSIS
Defendants raise seven objections to the Special Master’s Report and Recommendation.
The Court addresses each, in turn.
a. Construction of LPR 4.3
Defendants argue that Forta should not have been permitted to introduce Dr. Meyer’s
rebuttal testimony (as underlined in Exhibit A, (Docket No 89-3)) and Hearing Exhibit 8,
(Docket No. 89-5), because neither was disclosed prior to the Markman Hearing, (Docket No. 90
at 5). Specifically, Defendants contend that FED.R.CIV.P. 26(a)(2)(B) controls the pre-Markman
hearing disclosures required by LPR 4.3.
Rule 26(a)(2)(B) requires an expert to provide, inter alia, “i. a complete statement of all
opinions the witness will express and the basis and reasons for them; ii. the facts or data
considered by the witness in forming them; [and] iii. any exhibits that will be used to summarize

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or support them.”2 FED.R.CIV.P. 26(a)(2)(B)

Defendants also refer to the 1993 Advisory

Committee notes adopting revised Rule 26(a)(2)(B), which reads:
This paragraph imposes an additional duty to disclose information
regarding expert testimony sufficiently in advance of trial that
opposing parties have a reasonable opportunity to prepare for
effective cross examination and perhaps arrange for expert
testimony from other witnesses.
(Id.).
Defendants go on to claim that Local Patent Rule (“LPR”) 4.3 is consistent with Rule
26(a)(2)(B). (Docket No. 90 at 4). LPR 4.3 relevantly states:
At the same time the party serves its Opening Claim Construction
Brief, that party shall serve and file an identification of extrinsic
evidence, including testimony of lay and expert witnesses the party
contends supports its claim construction. The party shall identify
each such item of extrinsic evidence by production number or
produce a copy of any such item not previously produced. With
respect to any such witness, lay or expert, the party shall also serve
and file an affidavit signed by the witness that sets forth the
substance of that witness' proposed testimony sufficient for the
opposing party to conduct meaningful examination of the
witness(es).
LPR 4.3.
Thus, pursuant to FED.R.CIV.P. 37 (c)(1) and 16(f)(1)(C), Defendants move to strike the
portions of Dr. Meyer’s testimony which they claim were used as rebuttal expert testimony and
outside the scope of her affidavit. (Docket No. 90 at 5). They contend that, at the hearing, Forta,
in contradiction to the LPRs, the Scheduling Order, and the Federal Rules of Civil Procedure,
made the conscious decision to present Dr. Meyer as a rebuttal witness knowing that it failed to
provide a proper supplemental affidavit. (Docket No. 90 at 6). They further contend that Forta

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The Court notes that Defendants appear to quote commentary to Rule 26 rather than the text of the rule itself.
Compare Docket No. 90 at 4 with FED.R.CIV.P. 26(a)(2)(B). Ultimately, because there is no substantive difference,
this fact does not affect the Court’s ruling.

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presented this portion of Dr. Meyer’s testimony and evidence without any prior notice to
Defendants. (Id.)
Forta counters that Dr. Meyer’s “testimony was fairly within the scope of her affidavit
and did not unfairly surprise or prejudice Defendants.” (Docket No. 91 at 3). It argues Rule 26
is not applicable, as it “imposes a much greater burden on the parties than does LPR 4.3,” which
does not “incorporate the requirements of or reference” Rule 26. (Id.). Forta points out that Rule
26(a)(2)(A) is directed to “any witness [a party] may use at trial to present evidence under
Federal Rule of Evidence 702, 703, or 705,” and that it has not yet identified Dr. Meyer as a trial
witness. (Id. at 3–4).
Forta further contends that LPR 4.3 does not require or contemplate the comprehensive
expert report required by Rule 26(a)(2)(B). (Id. at 4). Rather, Forta notes, Rule 26(a)(2)(B) “sets
forth additional requirements for an expert who is ‘retained or specially employed,’ including
requiring ‘a written report . . . prepared and signed by the witness.’”

(Id. at 4 (quoting

FED.R.CIV.P. 26(a)(2)(B)) (emphasis omitted) (alteration in source)). That report must contain
the following:
(i)
a complete statement of all opinions the witness will
express and the basis and reasons for them;
(ii)
the facts or data considered by the witness in forming them;
(iii) any exhibits that will be used to summarize or support
them;
(iv)
the witness's qualifications, including a list of all
publications authored in the previous 10 years;
(v)
a list of all other cases in which, during the previous 4
years, the witness testified as an expert at trial or by deposition;
and
(vi)
a statement of the compensation to be paid for the study
and testimony in the case.
(Id. quoting FED. R.CIV.P. 26(a)(2)(B)).

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Forta argues that the reporting requirements imposed by Rule 26(a)(2)(B) far exceed
those of LPR 4.3 (Id.).3 It asserts that, although LPR 4.3 requires that the affidavit set forth the
substance of the witness’s proposed testimony, it does not adopt the language of Rule
26(a)(2)(B) and does not impose the “complete statement of all opinions” standard. (Id.). Forta
then contrasts LPR 4.3 with LPR 5.1, noting that LPR 5.1 addresses expert disclosures for trial,
requiring the parties to make “expert witness disclosures required by Rule 26.” (Id. (quoting
LPR 5.1)). Forta theorizes that, if the affidavits submitted under LPR 4.3 were subject to any of
the requirements of Rule 26, LPR 4.3 would have been drafted similarly to LPR 5.1 with a clear
reference to Rule 26. (Id.)
Defendants respond that “if Plaintiff’s characterization of [LPR] 4.3 is accepted, all that
is required to satisfy this LPR 4.3 is the mere identification of an expert witness without more.”
(Docket No. 93 at 1–2). For the reasons outlined below, the Court disagrees with Defendants’
contention, given the clear wording of LPR 4.3.
The Special Master notes that “it is beyond dispute that LPR 4.3 controls the information
required to be included in the affidavit of any witness – lay or expert – that will testify at a
Markman hearing in this district.” (Docket No. 94 at 4). He points out that “[t]he parties have
cited no case law that requires witness affidavits submitted under LPR 4.3 to conform to the
requirements of Rule 26 . . . .” (Id. at 5). He also indicates that he was similarly “unable to
locate any in the course of independent research.” (Id.). After noting the clear differences
between LPR 4.3 and Rule 26, the Special Master “concludes that Rule 26 does not govern the
affidavit requirement of LPR 4.3.” (Id. at 6 (citing Wonderland Nurserygoods Co., 2013 WL

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Indeed, as Forta notes, neither of Dr. Jacobs’ affidavits, submitted by Defendants, satisfies all of the
requirements set forth in Rule 26(a)(2)(B). (Id. at 4 n.1.).

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2471801, at *2 (W.D. Pa. June 7, 2013) (for the proposition that the contentions required by the
LPRs are an extension of notice pleadings, and do not implicate Rule 26)). (Id. at 6).
The key provision of LPR 4.3 requires that “the opposing party be provided with ‘the
substance of that witness’ proposed testimony sufficient . . . to conduct meaningful examination
. . . .’” (Id. at 8). The Special Master, despite noting that Dr. Meyer’s “affidavit may be
characterized as containing more in the way of conclusions than citation to underlying
authority,” finds that her “testimony falls within a fair reading of her affidavit.” (Id. at 8-9). He
goes on to state that, “given the nature of the dispute between the parties regarding the relevant
terms, it should not have been surprising to either party that the testimony of one expert would
bleed into the subject matter of the affidavit of the other.” (Id. at 9).
With respect to Hearing Exhibit 8, the Special Master implies that it should not have been
a surprise to Defendants by pointing out that their own expert, Dr. Jacobs, “conceded during the
hearing that the graph at Hearing Exhibit 8 is similar – albeit with one ‘critical difference’ – to
the graph included in his own affidavit.” (Id.). He also notes that Dr. Jacobs’ “graph was taken
from the text cited by [Dr. Meyer] in her affidavit.” (Id.).
Defendants object to these findings, arguing that the Special Master undertook an
“extremely liberal” reading of Meyer’s affidavit which allowed “sweeping expert conclusions
with little to no substance” to satisfy LPR 4.3. (Docket No. 95 at 3). They contend that the
“conclusion-filled Affidavit clearly did not provide Defendants with the necessary substance for
Defendants to conduct a meaningful examination of Dr. Meyer’s testimony as required by LPR
4.3.” (Id.). Further, Defendants argue that the “[a]ffidavit did not include or encompass the new
chart, Plaintiff’s Hearing Exhibit 8, that was hand drawn by Meyer, without any accurate scale,
and presented for the first time at the claim construction hearing.” (Id.). Thus, they claim that

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allowing LPR 4.3 “to be satisfied by the mere conclusions without anything more, and to stretch
those conclusions to encompass any evidence not disclosed in the Meyers’ [sic] Affidavit, such
as Plaintiff’s Hearing Exhibit 8, flaunts [LPR 4.3].” (Id.).
Forta responds that Defendants offer no support for their more stringent interpretation of
LPR 4.3. (Docket No. 96 at 3). The Special Master, it contends, properly construed the
requirements of LPR 4.3 and held that Dr. Meyer’s affidavit met same.
The Court agrees with the Special Master’s conclusion that the requirements imposed by
LPR 4.3 do not encompass those of Rule 26. Particularly compelling is the difference between
LPR. 4.3 and LPR 5.1. It is clear that the drafters of the LPRs understood that Rule 26 applied to
expert testimony at trial but did not seek to impose its requirements at the Markman Hearing.
Compare LPR 5.1 (expressly requiring compliance with Rule 26 for trial experts) with LPR 4.3
(not expressly imposing Rule 26’s requirements).
Further, the Court notes that the LPRs “are designed to advance [patent] litigation in a
timely and efficient manner and make it less expensive.” Copper Innovs. Grp., LLC v. Nintendo
Co., No. 07-1752, 2012 WL 628465, at *2 (W.D.Pa. Feb. 27, 2012) (J. Cercone) (citing
Raytheon Co. v. Indigo Sys. Corp., No. 07-109, 2008 WL 5378047, at *1 (E.D.Tx. Dec. 23,
2008)). The Court finds that construing a rule such as LPR 4.3 to require the comparatively
more arduous requirements of Rule 26 without any supportive authority runs contrary to the very
purpose of the rules. Additionally, this Court has previously held other portions of the pre-trial
procedures established by the LPRs as “extension[s] of notice pleadings.”

Wonderland

Nurserygoods Co., No. 12-196, 2013 WL 2471801, at *2 (W.D.Pa. June 7, 2013).
Accordingly, Defendants’ Objections regarding the Special Master’s interpretation and
application of LPR 4.3 are overruled.

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b. Whether Dr. Meyer’s Testimony “falls within a fair reading of her
affidavit”
As above, Defendants argue that FED.R.CIV.P. 26 barred Meyer’s rebuttal testimony. See
supra Section V.A. Forta counters that the less burdensome LPR 4.3 controls and that the
rebuttal testimony should not be stricken because it was fairly within the scope of Meyer’s
affidavit. (Id.).
The Special Master agreed with Forta with respect to LPR 4.3 and found that Meyer’s
“testimony falls within a fair reading of her affidavit.” (Id.).
Defendants object to the Special Master’s conclusion regarding the rebuttal testimony
arguing that he applied the wrong standard. (Docket No. 95 at 4). They assert that, because Dr.
Meyer “did not submit a rebuttal affidavit or disclose Plaintiff’s Hearing Exhibit 8 in her original
Affidavit, she failed to set forth the substance of her testimony sufficient for them to conduct
meaningful examination during the claim construction hearing” as required by LPR 4.3. (Id.).
Forta responds that Dr. Meyer made clear in her affidavit that “she considered the parties’
joint disputed claim terms charts, which set forth Defendants’ proposed limitation on the claim
terms polyolefin, polyethylene, and polypropylene, prior to rendering her opinions, and none of
her testimony constituted new evidence that Defendants should not have reasonably anticipated.”
(Docket No. 96 at 3). Moreover, Forta points out that, despite having access to it for over 6
weeks, Defendants never raised any objection to the supposedly “conclusion-filled” affidavit.
(Id.).
The Court agrees with the Special Master’s conclusion as to this point. Specifically,
“given the nature of the dispute between the parties regarding the relevant terms, it should not
have been surprising to either party that the testimony of one expert would bleed into the subject
matter of the affidavit of the other.” (Docket No. 94 at 9). For example, Defendants wish to
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have stricken all of Dr. Meyer’s testimony regarding their contention that polyolefins must have
at least 500 backbone carbons. (See Docket No. 89-3 at 8:2–11:2). In her affidavit, Dr. Meyer
states that she “reviewed and considered,” inter alia, the “relevant portions of the Joint Disputed
Claim Terms Chart,” which made clear that Defendants’ argument was that “Polyolefins have at
least 500 carbons in their polymer backbone.” (Docket No. 73 at 3). She further specifically
states that “[t]here is no absolute definition of chain length that characterizes a polymer, as
suggested by Defendants.”

(Docket No. 75-17 at ¶9).

Any reasonable reading of these

combined statements would put Defendants on notice that Dr. Meyer would contest Dr. Jacobs’
argument to the contrary.
Accordingly, this objection is overruled.4
c. The “Similarities” Between Plaintiff’s Hearing Ex. 8 and the Graph at
¶36 of the Jacobs Affidavit
As above, Defendants continue to argue that Rule 26 should bar Plaintiff’s Hearing
Exhibit 8. See supra Section V.A. Forta again counters that the less burdensome LPR 4.3
controls and that Hearing Exhibit 8 should not be stricken because it “did not unfairly surprise or
prejudice Defendants.” (Id.).
The Special Master agreed with Forta with respect to LPR 4.3 and found that Hearing
Exhibit 8 should not be stricken. (Id.).
Defendants object to the Special Master’s conclusion regarding Hearing Exhibit 8,
arguing that he misconstrued Dr. Jacobs’ testimony concerning same and “the ‘critical
difference’ discussed by Defendants’ expert makes clear that these charts address distinct and
measure drastically different properties.” (Hearing Tr. at 146-147; Docket No. 95 at 4-5). They
assert that the substance of the two graphs is “clearly different” (Docket No. 95 at 5).
4

As this Objection is fairly broadly worded, the Court relies upon its analysis of Defendants’ Objections to
individual Exhibits, infra, as additional support for overruling it.

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Specifically, they focus on the section of the graphs where the number of carbon atoms in the
backbone ranges from 0-70 carbons. (Id. at 5). Defendants point out that Dr. Jacobs’ graph
illustrates mechanical strength and that, in the 0-70 carbon atom range, the molecules have no
mechanical strength. (Id.) (emphasis added). Dr. Meyer’s graph, (Hearing Exhibit 8), on the
other hand, illustrates the melting point and that, in the 0–70 carbon atom range, the molecules
not only have a melting point but also experience a steep increase in melting point throughout.
(Id.). Defendants, therefore, argue that this difference delinks Dr. Meyer’s graph from that of
Dr. Jacobs’ and prohibits Dr. Meyer’s from being admitted into evidence without a cited source.
(Id.).
Forta responds that Dr. Meyer’s graph (Hearing Exhibit 8) “was merely offered as a
visual aid to enhance [her] testimony.” (Docket No. 96 at 4). Forta then asserts that the Special
Master “is more than adept to consider the weight of [the] Exhibit” and that Defendants “have
failed to set forth grounds warranting its exclusion.” (Id.)
As learned counsel are aware, demonstrative evidence is “[p]hysical evidence that one
can see and inspect (i.e., an explanatory aid, such as a chart, map, and some computer
simulations) and that, while of probative value and usu[ally] offered to clarify testimony, does
not play a direct part in the incident in question.” BLACK’S LAW DICTIONARY (10th ed. 2014)
(emphasis added). Further, the “admission of demonstrative evidence is at the discretion of the
trial court.”

United States v. Schwyhart, 123 F.App’x 62, 67 (3d Cir. 2005)

(unpublished) (citing United States v. Rockwell, 781 F.2d 985, 986 n. 3 (3d Cir.1986)); see
also FED.R.EVID.611(a) & Advisory Committee Notes, 1972 proposed rules, (“the court shall
exercise reasonable control over the mode and order of interrogating witnesses and presenting
evidence,” which include “the use of demonstrative evidence . . . and the many other questions

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arising during the course of a trial which can be solved only by the judge's common sense and
fairness in view of the particular circumstances”). For the Court to fully understand Dr. Meyer’s
testimony, an explanation of certain scientific terms and concepts was needed. Cf. Carnegie
Mellon Univ. v. Marvell Tech. Grp., Ltd., No 09-290, 2012 WL 6578412, at *2 (W.D.Pa. Dec.
17, 2012) (J. Fischer). Hence, Plaintiff’s Hearing Ex. 8 was helpful in demonstrating to the
Court the meaning of her testimony.
The Court also agrees with the Special Master’s conclusion regarding Hearing Exhibit 8.
Especially telling, as the Special Master notes, is the fact that Defendants’ own expert, Dr.
Jacobs admitted that Dr. Meyer’s chart was “similar” to his own. (Hr’g Tr. At 146:18). Dr.
Jacobs then explained the “critical difference” between the charts. (Id. at 146:18–147:22).
Accordingly, with Dr. Jacobs’ rebuttal testimony and leave to file an additional expert report,
Defendants will be fully capable of curing whatever potential prejudice they have allegedly
experienced without explicit disclosure of Plaintiff’s Hearing Exhibit 8 prior to the Markman
Hearing.
Finally, with Dr. Jacobs’ testimony at the Markman Hearing and Defendants’
supplemental filing, the Court agrees with Forta’s position that “Special Master McIlvaine is
more than adept to consider the weight of this Exhibit in rendering his Claim Construction
Report and Recommendation,” (Docket No. 96 at 4). Cf. Texas v. Florida, 306 U.S. 398, 413
(1939); In re J.A.R. Barge Lines, L.P., Nos. 03-163, 03-180, 04-754, 04-1611, 2007 WL 674348,
at *16 (W.D.Pa. Feb. 28, 2007).
Accordingly, this Objection is overruled.
d. Whether Plaintiff’s Hearing Ex. 8 is “taken from the text cited by Dr.
Meyer in her affidavit”

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Defendants contend that “[t]he Special Master’s Report is factually incorrect to the extent
that it holds that Plaintiff’s Hearing Exhibit 8 did not create any prejudice or surprise to
Defendants since it ‘was taken from the text cited by Meyers [sic] in her affidavit.’” (Docket
No. 95 at 4–5).
Forta responds that, “[a]lthough the hand-drawn graph . . . is not an exact replica of a
graph from a text, a reading of the Hearing Transcript demonstrates that Defendants’ objection
misrepresents Dr. Meyer’s testimony and Special Master McIlvaine’s conclusion.” (Docket No.
96 at 5–6 (citing Hr’g Tr. at 119, 123–24)).
The Court includes the entire paragraph at issue for completeness:
Similarly, Defendants’ expert conceded during the hearing that the
graph at Hearing Exhibit 8 is similar – albeit with one “critical
difference” – to the graph included in his own affidavit. Hr’g Tr. at
146-147; (ECF No. 78-12 ¶ 36). It also is worth noting that this
graph was taken from the text cited by Dr. Meyers [sic] in her
affidavit. Compare (ECF No. 89-5) with (ECF No. 78-12 ¶ 36 and
n.1) (“Ex. 4 is taken from the textbook relied on at par. 6 of the
Meyer Affidavit.”); see also (ECF No. 89-6 ¶ 6 and n. 1).
(Docket No. 94 at 9). The first sentence of this paragraph first references Dr. Meyer’s handdawn graph, then the graph Dr. Jacobs included in his affidavit. 5 (Id.). The next sentence then
references “this graph.” (Id.). While traditional syntax would suggest that “this graph” is the
last-referenced graph in the previous sentence (i.e., Dr. Jacobs’), the citation following the
second sentence references both Dr. Meyer’s and Dr. Jacobs’.

(Id.).

As such, it is not

completely unreasonable to construe this paragraph as suggesting that Dr. Meyer’s graph,
Plaintiff’s Hearing Ex. 8, “was taken from the text cited by Dr. Meyers [sic] in her affidavit.”
(Id.).

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It is beyond contest that Dr. Jacobs’ graph came from the text cited in Dr. Meyer’s Affidavit. (Docket No. 78-12
¶36 and n.1).

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However, as stated, supra, Defendants elicited testimony from their expert following Dr.
Meyer’s testimony and the admission of Plaintiff’s Ex. 8, explaining the difference between his
graph and Dr. Meyer’s. (Hr’g Tr. at 146:18–147:22). Further, the Court holds that leave to
submit a supplemental expert report will cure any alleged prejudice suffered by Defendants due
to the admission of Plaintiff’s Ex. 8 and Defendants’ interpretation of the Special Master’s
Report.
Accordingly, this Objection is overruled.
e. Dr. Meyer’s Testimony Regarding Her Qualifications and Experience
Defendants request that Dr. Meyer’s CV and testimony regarding her qualifications be
stricken from the record because, “[p]rior to the [Markman] Hearing, Defendant was not given
any notice of Dr. Meyer’s qualifications other than what was provided in paragraph 1 of the
earlier Meyer [Affidavit],” and because “Defendant[s] also did not have any opportunity to
review Dr. Meyer’s alleged publications or evaluate her claim to have worked with a ‘premier’
polymer chemist.” (Docket No. 90 at 7).
Plaintiffs counter that Dr. Meyer’s CV and her testimony should not be stricken because
they “neither prejudiced Defendants nor deprived them of an opportunity to assess Dr. Meyer’s
qualifications prior to the [Markman] Hearing.” (Docket No. 91 at 9). Specifically, Forta argues
that, because Dr. Meyer’s affidavit states that her CV is attached, Defendants could have either
informally brought to Plaintiff’s Counsel’s attention the fact that it was not actually attached or
formally objected, pursuant to LPR 4.3.6 (Id. at 10).

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The Court expects Counsel to communicate. See FED.R.CIV.P. 1. It agrees with Forta’s position that Defendants
were on notice of the fact that the CV was not attached, as intended. Dr. Meyer’s Affidavit was filed as Exhibit M
to Plaintiff’s Opening Claim Construction Brief. (Docket No. 75). The brief and its exhibits were filed on
September 26, 2014. (Id.). The Markman Hearing took place on November 12, 2014. (Docket No. 85).
Approximately six weeks passed without Defendants objecting to the failed inclusion of the CV. Based on the
representations of Plaintiff’s Counsel at the Markman Hearing and in subsequent filings, the Court accepts their

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The Special Master found that “[t]o the extent that they wished to question Dr. Meyer
regarding the information included in her CV, it appears, on its face, that Defendants suffered at
least some prejudice due to the late hour of its disclosure.” (Docket No. 94 at 9). However, the
Special Master finds that any alleged prejudice was not the result of unfair surprise because
Defendants had Dr. Meyer’s affidavit, referencing her CV for more than six weeks prior to the
Markman Hearing. (Id.). Further, the Special Master points out that “[t]here is no evidence that
Defendants ever objected to the missing CV prior to the hearing, and they explicitly refrained
from objecting at the hearing itself when Plaintiff introduced the CV into evidence.” (Id. (citing
Hr’g Tr. At 95:20–96:6).
Defendants object to this finding. (Docket No. 95 at 6). However, they raise no new
arguments in support. (Id.). Defendants merely reiterate that they had “no prior notice of Dr.
Meyers’ [sic] qualifications beyond what was provided in paragraph 1 of” her affidavit. (Id.).
Plaintiff also responds with the same arguments it made in its initial response brief (i.e., that
Defendants were on notice of the missing CV and that they did not object to its admission at the
Markman Hearing).
Finally, the fact that Defendants failed to object to this portion of Dr. Meyer’s testimony
or the admission of her CV at the Markman Hearing is determinative.7 Defendants waived their
objection as to these issues by failing to object to Dr. Meyer’s testimony and affirmatively

assertion that the omission was unintentional and has no reason to doubt that the CV would have been produced
immediately upon request of Defense Counsel.
7
The Court also suggests that, in anticipation of a hearing, it is incumbent upon Counsel to prepare for same. In this
Court’s estimation, preparation includes researching your opponents and, where relevant, their witnesses, expert or
otherwise. In advance of a Markman Hearing where competing expert testimony is anticipated, such preparation
should include an investigation of the opposing party’s expert. To that end, Defense Counsel could question their
own expert witness as to what, if any, information he had about Dr. Meyer. Moreover, the Internet provides
multiple platforms to explore the credentials and background of Dr. Meyer (or any other witness). Where, as here,
Defendants were put on notice that this expert’s CV was supposed to be attached to a prior filing, then and in that
event, the duty is on Defendants to point this out, either informally, by way of a phone call or email to opposing
counsel, or, if necessary formally, through motions practice.

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stating that they had “[n]o objection,” to the introduction of her CV, Hr’g Tr. At 96:5. Fleck v.
KDI Sylvan Pools, Inc., 981 F.2d 107, 116 (3d Cir. 1992). Accordingly, Defendants’ Objections
as to this issue are overruled.
f. The 10 Minute Recess
At the completion of Plaintiff’s examination of Dr. Meyer, Defendants requested “a ten
minute recess to consider the new evidence that was put in by Dr. Meyer and to talk it over with
our expert as well.” (Hearing Tr. at 118:14–17). The Special Master granted the request, stating:
“[w]ell, I guess I'll honor that request, but let's keep it tight because we'd like to finish up by the
end of the day today. Ten minutes, strictly ten minutes and then we'll get back on the record
here.” (Id. at 18-21).
Defendants allege that the Special Master limited the recess granted to Defendants during
the Claim Construction Hearing to a strict ten minutes. (Docket No. 95 at 7). They then contrast
the ten minute recess during the Claim Construction Hearing with the minimum of two weeks
each side was given to review and respond to the opposing party’s evidence per the Amended
Patent Scheduling Order. (Id.; see also Docket No. 57 at ¶¶ 7–9). Defendants claim that the ten
minute recess was “unreasonable and insufficient for Defendants to analyze and consider the
reliability of this new testimony and evidence (i.e., Plaintiff’s Hearing Exhibit 8) presented by
Plaintiff.” (Docket No. 95 at 7). They also argue that the Special Master’s recommendation that
Defendants be permitted to present additional evidence, does not remedy the consequences of
Plaintiff’s allegedly blatant disregard for the time periods for submitting evidence pursuant to the
Court’s Amended Scheduling Order and Local Patent Rules. (Id.).
Forta responds that, because Dr. Meyer’s “testimony falls within a fair reading of her
affidavit and Defendants “had a full and fair opportunity to cross-examine her” after the

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requested recess, the objection lacks merit. (Docket No. 96 at 7.) They further argue that
“Defendants’ filing of additional evidence will entirely cure any possible prejudice that they may
have suffered.” (Id.).
As stated, supra, the Court agrees that the submission of an additional expert report will
cure any prejudice Defendants allegedly suffered at the Markman Hearing. Further, the Court
notes that Defendants specifically “ask[ed] for a ten-minute recess.” (Hr’g Tr. At 118:14–17).
That Special Master McIlvaine granted their request and instructed them to adhere to it does not
evince prejudice.8 As such, Defendants’ Objection is overruled as to the recess, but they shall
have an opportunity to present additional evidence, in the form of a supplemental expert report,
within two weeks.
g. “Fruit from the Poisonous Tree”
As detailed above, Defendants originally argued that Rule 26 barred Dr. Meyer’s rebuttal
testimony.

See supra Section V.A.

Specifically, Defendants seek to strike Dr. Meyer’s

testimony regarding wax as follows: “wax is not a phase. It is not an identifiable phase with a
phase transition.” (Docket No. 90 at 5; Hearing Tr. at 108: 5-6). Forta counters that the less
burdensome LPR 4.3 controls and that the rebuttal testimony should not be stricken because it
was fairly within the scope of Dr. Meyer’s affidavit. (Id.).
Defendants also allege bad faith with regard to the rebuttal testimony because Plaintiff
“blatantly ignored” the Amended Patent Scheduling Order, (Docket No. 57), and the LPRs by
presenting “new evidence” at the claim construction hearing, (Docket No. 90 at 9).
The Special Master agreed with Forta with respect to LPR 4.3 and found that Dr. Meyer’s
“testimony falls within a fair reading of her affidavit.” (Docket No. 94 at 9). In specifically
8

Defendants could have asked for more than a ten-minute recess. If they were so surprised by Dr. Meyer’s
testimony that they felt it necessary, they could have requested the hearing be continued. In that regard, the Court
notes that it initially set aside two full days for this Markman Hearing. (Docket No. 57).

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addressing the bad faith allegation, he determined that “it is difficult to characterize [Dr. Meyer’s
testimony] as made in bad faith,” as “most of her testimony at issue falls within the scope of the
affidavit.” (Id. at 10). He continues that “[Dr. Meyer’s] digression into the subject of the phasestate of waxes also was at least in part a response to a question posed by the Special Master.”
(Id.; Hr’g Tr. at 107: 8-9).
Defendants object to the Special Master’s finding of a lack of bad faith, arguing that, the
fact that he inquired about a “phase diagram” in relation to Plaintiff’s Hearing Exhibit 8, does
not alter the fact that Dr. Myer’s testimony was improper. (Docket No. 95 at 8). They repeat
their claim that the testimony was in violation of the Amended Patent Scheduling Order, (Docket
No. 57), and the LPRs; this time calling it “willful disregard.” (Id.).
Forta responds by claiming that Defendants were not prejudiced in light of the fact that
“they were granted a recess to assess Dr. Meyer’s testimony, examined their own expert after
Dr. Meyer testified, could have requested to recall Dr. Meyer, who remained in the courtroom
for the duration of the hearing, and Special Master McIlvaine has recommended that they be
permitted to submit additional evidence.” (Docket No. 96 at 8) (emphasis in original). They
argue that the ability to submit additional evidence will surely cure any prejudice that Defendants
might have suffered. (Id.)
Again, the Court agrees that the recommendation that Defendants be granted leave to
submit additional evidence will cure any prejudice they allegedly experienced as a result of Dr.
Meyer’s rebuttal testimony. Accordingly, this Objection is overruled.
III.

CONCLUSION

AND NOW, this 5th day of March, 2015, the Court having participated in the Markman
Hearing in this action, and upon consideration of the Defendants’ Motion to Strike Certain

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Portions of Plaintiff’s Expert Testimony and Hearing Exhibits Presented at the November 11,
2014 Claim Construction Hearing, (Docket No. [89]), Defendants’ Brief in Support of same,
(Docket No. [90]), Plaintiff’s Brief in Opposition, (Docket No. [91]), Defendants’ Reply Brief,
(Docket No. [93]), the Special Master’s Report and Recommendation, (Docket No. [94]),
Defendants’ Objections thereto, (Docket No. [95]), and Plaintiff’s Responsive Brief, (Docket No.
96),
IT IS HEREBY ORDERED that Defendants’ Objections are OVERRULED.
IT IS FURTHER ORDERED that, upon de novo review, the Special Master’s Report and
Recommendation is ADOPTED as the opinion of the Court, with the exception that Defendants
shall have fourteen days to submit a supplemental expert report, rather than the recommended
ten.
IT IS FURTHER ORDERED that Defendants’ Motion is GRANTED, only to the extent
Defendants seek to file a supplemental expert report directly rebutting the testimony and exhibits
addressed above and is DENIED in all other respects.
IT IS FINALLY ORDERED that said supplemental report shall be filed by March 19,
2015.

s/ Nora Barry Fischer
Nora Barry Fischer
United States District Judge
cc/ecf: All counsel of record.
Special Master John W. McIlvaine, III, Esq.

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