Pure Fishing Inc v. Normark Corporation

Filing 90

OPINION AND ORDER: Defendant's request to bar Plaintiff from offering Dr. Rubenstein as a claim construction witness is granted. Signed by Honorable Cameron McGowan Currie on 11/7/2011. (cbru, )

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

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

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

OPINION AND ORDER
BARRING WITNESS

This matter is before the court on Defendant’s request to bar an expert witness belatedly
offered by Plaintiff. Plaintiff identified this witness on November 4, 2011, as an expert to testify
as to “the molecular weight characterization of polymers” in a claim construction hearing scheduled
for November 9, 2011. Dkt. No. 86. However, the deadline for identifying witnesses to give
testimony relevant to claim construction expired in July 2011.1
To name a witness so far beyond the deadline set by scheduling order would require a strong
justification. As no justification is offered or apparent, the court grants Defendant’s request.2
Absence of Surprise as to Expert Testimony. The issue of how molecular weight of a
polymer should be measured was clearly identified as an issue for claim construction in the parties’
joint claim construction statement. See Dkt. No. 69-1 at 3-7 (disclosing differing constructions and

1

This deadline was extended several times. See Dkt. No. 33 (setting deadline for witness
and related disclosures as July 1, 2011); Dkt. No. 53 (extending deadline to July 8, 2011); Dkt. No.
63 (extending related deadline to July 13, 2011); Dkt. No. 65 (extending related deadline to July 29,
2011).
2

Defendant’s request to bar the witness was first raised by email. The court initially set a
teleconference for Monday, November 7, 2011, to hear the dispute. After reading the filed
submission in which Plaintiff indicated its intent to call this witness, the court determined that no
hearing was necessary. The court so informed the parties on November 4, 2011.

supporting evidence on which each party intended to rely). This joint filing in late July 2011 reflects
the parties’ prior exchange of positions and attempts to reach agreement. Thus, it establishes that
Plaintiff had notice of differences as to how the molecular weight of a polymer was measured well
before July 29, 2011. Plaintiff does not, in fact, suggest otherwise.
Defendant timely disclosed an intent to rely on expert testimony as to this point. Id. at 7
(disclosing Defendant’s intent to rely on Professor Ronald A. Siegel). Plaintiff did not.
Indeed, Plaintiff acknowledged both its understanding that Defendant intended to rely on
expert testimony and its own failure to name an expert witness in its opening claim construction
memorandum:
Pure Fishing believes that Normark intends to rely on an expert declaration as
extrinsic evidence for their preferred construction. Pure Fishing does not believe that
sort of evidence is necessary here, but if the Court sees fit to allow it, Pure Fishing
requests that it be allowed to: 1) submit its own expert report and 2) depose
Normark’s expert prior to the Markman hearing.
Dkt. No. 74 at 22 (filed 8/31/2011). Plaintiff did not, however, move for relief from the earlier
expert-witness deadline. Neither did Plaintiff mention an expert in its responsive memorandum.
Dkt. No. 79 (filed 9/28/2011).
Defendant, in contrast, relied extensively on Professor Siegel in its opening memorandum
and included the following argument in its responsive memorandum:
Pure Fishing requests that it be allowed to submit its own expert report on this issue.
Dkt. 74, p. 18. That request is untimely, as disclosure of expert reports were due on
July 13 under the modified scheduling order. See Dkt. 33, 53, and 63. Pure Fishing
also asks that it be allowed to depose Professor Siegel. Dkt. 74, p. 18. Normark notes
that the scheduling order already permits such a deposition, see Dkt. 33, item 2(f),
though Pure Fishing has not sought to schedule one. Normark also notes that it
anticipates providing Professor Siegel’s testimony by Declaration, unless the Court
has particular questions it wishes him to address or prefers that he appear live.
Dkt. No. 80 at 2 (n.1) (filed 9/28/2011).

2

Thus, there is and was no surprise in the fact that Defendant intends to rely on an expert as
to the particular subject matter. Neither is there any surprise that Defendant would oppose any
attempt by Plaintiff to name an expert after the relevant deadline.3
Change in Defendant’s Position. The court will assume without deciding that the position
Defendant now espouses is somewhat different from the position suggested in the Joint Claim
Construction Statement (at least as understood by Plaintiff). Specifically, Defendant has disavowed
any intent to rely on the average molecular weight and degree of polymerization of all polymers in
a lure. Even if this is a change, it is a change which disavows a position Plaintiff argued was
incorrect. Thus, if it is a surprise, it should be a welcome one.4 In any event, there is no suggestion
that the defense expert’s testimony has changed as that testimony relates to how the molecular
weight of polymers is measured (not which polymers are measured). Thus, there is no shift in the
defense position which justifies naming a belated expert.
Change in Plaintiff’s Position. Plaintiff’s proposed construction of the relevant term as
set forth in both the July 29, 2011 Joint Claim Construction Statement and Plaintiff’s opening
memorandum suggests a theory that the claim limitation at issue is satisfied if even one molecule
of a polymer component meets the molecular weight and degree of polymerization minimums (“one-

3

In its opening memorandum, quoted above, Plaintiff suggests a belief that it may ignore a
deadline for naming an expert witness if it believes such testimony is unnecessary, then revive its
right to name an expert if the court accepts testimony from an expert offered by the opposing party.
Such an interpretation of a scheduling order is nonsensical.
4

Defendant has disavowed the position Plaintiff attributes to it: that the molecular weight
to be considered would be the average of all polymer components used in a lure (assuming more
than one such component) (“all-polymers theory”). Despite Defendant’s repeated disavowals of this
position, Plaintiff continues to argue against it. Thus, it is not even clear that Plaintiff understands
this possible change in position by Defendant.
3

molecule theory”). See Dkt. No. 69-1 at 5; Dkt. No. 74 at 14. Plaintiff appeared to disavow this
position in its responsive brief.
This led the court to seek clarification by email whether the parties had, in fact, now reached
agreement as to their position. In responding to the court’s inquiries, Plaintiff retracted its prior
disavowal of the one-molecule theory. While this may signal a significant change in Plaintiff’s
position (albeit a change back to Plaintiff’s apparent starting point), it is hardly a change wrought
by another party such as might justify the late naming of an expert.
Absence of Leave to Name Late Witnesses. It was not until November 4, 2011, virtually
on the eve of the claim construction hearing, that Plaintiff gave notice that it intended to offer an
expert witness. This notice came in response to a docket text order entered November 3, 2011, in
which the court directed the parties to file responses by November 4, 2011, “(1) advising whether
the party intends to present witnesses; (2) disclosing the name of the witness and subject matter of
the intended testimony, and (3) confirming that the witness has been properly and timely disclosed
as it relates to the subject matter of the intended testimony.” Dkt. No. 84 (emphasis added).5
Plaintiff responded to these inquiries by indicating it intended to present testimony from
Michael Rubinstein, Ph.D., on the subject mater of the “molecular weight characterization of

5

The witness-related inquiry was prompted by several factors. First, because a hearing with
witnesses generally takes longer, the court desired to know, for its own planning purposes, whether
witnesses would be presented. Second, the court sought to clarify that the parties should reach their
own decision whether to offer live testimony. Third, although it appeared Plaintiff had not timely
identified an expert on the relevant claim construction issue, the court wanted to confirm that this
was correct and also to determine whether there were any non-expert witnesses Plaintiff might offer.
4

polymers.” Dkt. No. 86 at 1. As to timeliness of the disclosure of this witness and subject matter,
Plaintiff stated:
Pure Fishing confirms that Dr. Rubinstein has been properly and timely disclosed to
Defendant Normark following the Court’s inquiry on the subject matter. Dr.
Rubinstein was disclosed and an expert report by him is being served on Normark
today. Dr. Rubinstein will also be made available for deposition before the Court’s
hearing.
Id. at 2. Plaintiff offered no other justification for the belated naming of the witness, suggesting a
it was relying on whatever leave to name a late expert might be implicit in the court’s request that
the parties provide information relating to any witnesses they intended to present at the hearing.
The deadline for disclosing claim construction witnesses expired in July 2011. Plaintiff
makes no suggestion that Dr. Rubenstein was disclosed by this deadline. Instead, its statement that
the witness was “timely disclosed” in response to the court’s inquiry (referring to the docket text
order relating to witness presentation) and that Plaintiff was then serving a report on Defendant
confirm that the witness had just been identified and his report was, at best, in transit to Defendant.
This suggestion of timeliness turns the court’s inquiry on its head. In addition to directing
the parties to advise of witnesses to be presented, the court directed the parties to “confirm[] that the
witness has been properly and timely disclosed as it relates to the subject matter of the intended
testimony.” This third part of the inquiry can only be read to reaffirm, rather than waive, prior
deadlines. To read it otherwise is unreasonable.
CONCLUSION
In summary, Plaintiff has offered and the court can find no justification for allowing Plaintiff
to name an expert witness on claim construction long after the deadline for doing so has passed and

5

virtually on the eve of the claim construction hearing. Defendant’s request to bar Plaintiff from
offering Dr. Rubenstein as a claim construction witness is, therefore, granted.
IT IS SO ORDERED.
s/ Cameron McGowan Currie
CAMERON MCGOWAN CURRIE
UNITED STATES DISTRICT JUDGE
Columbia, South Carolina
November 7, 2011

6