Pure Fishing Inc v. Normark Corporation

Filing 301

OPINION AND ORDER granting in part 292 Motion in Limine. Signed by Honorable Cameron McGowan Currie on 4/10/2013.(cbru, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF SOUTH CAROLINA
COLUMBIA DIVISION
PURE FISHING, INC., an Iowa Corporation,

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Plaintiff,
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v.
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NORMARK CORPORATION, a Minnesota
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Corporation, d/b/a RAPALA,
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Defendant.
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_________________________________________ )

C.A. No. 3:10-cv-2140-CMC

OPINION AND ORDER
ON
MOTION IN LIMINE

This matter is before the court on motion of Defendant, Normark Corporation (“Normark”)
to exclude testimony by Plaintiff’s expert, John T. Goolkasian (“Goolkasian”), from trial of the
inequitable conduct counterclaim. Plaintiff, Pure Fishing, Inc. (“Pure Fishing”), argues that
Goolkasian should be permitted to testify regarding practices and procedures of the United States
Patent and Trademark Office (“PTO”), including “as to what a ‘reasonable examiner’ would
understand in the context of the prosecution of the patent application” at issue in the counterclaim.
Dkt. No. 294 at 2. While Pure Fishing argues some of this evidence may be relevant to intent, it
asserts that Goolkasian “will not offer an opinion as to the ultimate issue of the patentee’s intent.”
Id.
For the reasons set forth below, the court grants the motion in limine to the extent
Goolkasian’s testimony might be offered with reference to the patentee’s intent. While the court
finds it doubtful that Goolkasian may offer testimony as to the materiality of statements relating to
the Hogenboom patent, it reserves final ruling on that point until trial. If Goolkasian is offered, he
shall be offered as Pure Fishing’s last witness, which will allow the court to determine the relevance

and admissibility of Goolkasian’s testimony in the context of all other evidence. As appropriate, the
court may conduct voir dire and allow further argument before making a final decision.
Relevance to Intent
The court has already determined that there was a material misstatement regarding
inventorship and a material omission in the failure to disclose that 1995 Fireline Fused was on sale
more than a year prior to the application for the patent now at issue (the “‘214 Patent”). The issue
for trial as to the misstatement and omission is whether they were made with an intent to mislead the
patent office.
There is a third potential material misrepresentation which relates to the Hogenboom Patent
(“Hogenboom”). As to this alleged misrepresentation, Normark must prove both materiality and
intent to mislead.
Whether Goolkasian might offer testimony as to materiality of Hogenboom is discussed
below. The court here considers whether Goolkasian’s testimony would be relevant to intent as to
any of the three alleged misrepresentations or omissions. In conducting this analysis, the court
considers Goolkasian’s testimony in the context of Pure Fishing’s specific arguments as to the
absence of intent to mislead.
Inventorship. As it relates to misrepresentation of Cook’s inventorship, Pure Fishing’s
position is that Roger Cook (“Cook”), who was listed as the sole inventor on the patent application,
did not intend to make a material misrepresentation because he was unaware of the legal standards
which precluded him from claiming sole inventorship. Goolkasian’s testimony as to PTO practices
and procedures could hardly support Cook in this regard given Cook’s claim of ignorance of such
procedures.

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Pure Fishing argues that Lance Johnson (“Johnson”), the attorney who made the patent
application, cannot have intended to mislead the PTO regarding inventorship because he was
unaware of any facts suggesting Cook was not the true inventor.

No testimony by Goolkasian

regarding PTO practices and procedures could make this factual position any more or less likely to
be true.
1995 Fireline Fused. As it relates to the failure to disclose that 1995 Fireline Fused was on
sale more than a year before the patent application was filed, Pure Fishing’s position is similar:
Cook, while aware of the facts (the prior sale of 1995 Fireline Fused), was unaware of the legal bar,
and Johnson, while aware of the legal bar, was unaware of the relevant facts. Again, nothing
Goolkasian might offer would be relevant to proving either position.
Hogenboom. The alleged material mistatements regarding Hogenboom were made in an
effort to distinguish Hogenboom from the patent being sought. The representations included
statements or argument that Hogenboom only related to rope and that there was no prior art which
bridged the gap between Hogenboom’s application to rope and a similar process applied to fishing
line.
Pure Fishing’s position is that these remarks were made by Johnson without review by Cook.
Thus, Cook cannot have intended to mislead because he did not approve the remarks. While
Johnson did craft the remarks, he claims he was not aware of any implicit misstatement, most
critically the fact of the prior sale of 1995 Fireline Fused when he made the statement regarding
failure of prior art to bridge the gap. Johnson will, presumably also claim not to have intended to
mislead by his statement regarding Hogenboom’s limitations, given that he was aware the patent
examiner had a copy of Hogenboom and his belief that his statement constituted argument rather
than a statement of fact.
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Again, nothing in Goolkasian’s report or Pure Fishing’s argument suggests any testimony
relevant to either point. For example, any testimony Goolkasian might offer as to whether Johnson
would have expected the patent examiner to search published prior art is irrelevant because it is
undisputed the examiner already had Hogenboom. Moreover, no search of published prior art would
have found reference to the prior sale of 1995 Fireline Fused.
In sum, Pure Fishing has failed to suggest any testimony Goolkasian might offer relevant to
intent, at least beyond discussion of the law. The latter may be offered by argument of counsel to
the extent relevant. It is not properly offered through an expert witness.
Relevance to Materiality
As noted above, the only remaining issue as to materiality involves statements made by
Johnson for the purpose of distinguishing Hogenboom. Given Pure Fishing’s concession that
Goolkasian is “not one of ordinary skill in the art,” Dkt. No. 294 at 9, it appears doubtful that he may
testify as to the likely effect of these statements on issuance of the patent. See Therasense, Inc. v.
Becton, Dickinson & Co., 694 F.3d 1276 (Fed. Cir. 2011).1

1

Normark submitted Goolkasian’s pre-summary judgment report as an attachment to its
motion in limine. This report suggests various opinions inconsistent with the court’s prior summary
judgment rulings, some of which are relevant to the issues remaining for trial. Thus, the opinions
to be offered at the trial would, necessarily, need to be modified with respect to certain assumptions
made regarding materiality.
Pure Fishing responded with a declaration indicating Goolkasian would testify regarding his
experience as an examiner. This declaration notes that examiners are “typically not of ordinary skill
in the art relevant to the applications they examine, are required to be familiar with the level of skill
in the art and to examine applications from the perspective of one of ordinary skill in the art.” Dkt.
No. 294-1 (emphasis in original). Thus, Goolkasian states he is qualified to opine regarding what
a “reasonable examiner would have considered and done in the course of examining the patent
application.” He further opines regarding what fields of search would have been and, in fact, were
conducted.
In its trial brief, Pure Fishing also states that Goolkasian is “expected to testify regarding the
materiality of statements or alleged omissions Johnson made in the office action response dated
September 29, 1997.” Dkt. No. 300 at 19. Pure Fishing continues: “Specifically, Goolkasian is
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The court, nonetheless, declines to rule on this issue until all other evidence has been
presented. In the event there is sufficient evidence of intent, an issue as to which Goolkasian’s
testimony is not relevant for reasons addressed above, the court will take up this issue prior to
allowing Goolkasian to testify on the issue of materiality. As appropriate, the court may conduct voir
dire of Goolkasian and allow further argument before deciding whether to allow Goolkasian to
testify.
CONCLUSION
For the reasons set forth above, the motion in limine is granted to the extent Goolkasian
might offer testimony relevant to intent. The court reserves ruling on whether Goolkasian may offer
testimony relevant to materiality of the Hogenboom statements.
IT IS SO ORDERED.

s/ Cameron McGowan Currie
CAMERON MCGOWAN CURRIE
UNITED STATES DISTRICT JUDGE
Columbia, South Carolina
April 10, 2013

expected to testify that Johnson’s comments and alleged omissions were not material to the
examination of the ‘995 application.” Id. This description of Goolkasian’s testimony suggests
nothing more than a legal conclusion, which would not be the proper subject of expert testimony.
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