PRECISION FABRICS GROUP, INC. v. TIETEX INTERNATIONAL, LTD.

Filing 318

MEMORANDUM ORDER signed by Honorable Thomas D. Schroeder on 2/25/2018. As set forth herein, the parties motions in limine (183) Motion in Limine; (185) Motion in Limine; (205) Motion in Limine; (209) Motion in Limine; (213) Motion in Limine; (220) Motion in Limine; (222) Motion in Limine; (224) Motion in Limine; and (228) Motion to Strike in case 7:17cv3037; and (153) Motion in Limine; (155) Motion in Limine; (175) Motion in Limine; (179) Motion in Limine; (183) Motion in Limine; (190) Motion in Limine; (192) Motion in Limine; (194) Motion in Limine; (198) Motion to Strike in case 7:17cv3038 are GRANTED IN PART and DENIED IN PART. Any motion not specifically resolved, in whole or in part, in this opinion or during the hearing will be addressed shortly in a separate order. The parties are directed to instruct their witnesses in conformance with this court's order. Associated Cases: 7:17cv3037, 7:17cv3038(Schroeder, Thomas)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF SOUTH CAROLINA

PRECISION FABRICS GROUP, INC.,

)
)
Plaintiff,
)
)
v.
)
)
TIETEX INTERNATIONAL, LTD.,
)
)
Defendant.
)
)
________________________________ )
)
PRECISION FABRICS GROUP, INC., )
)
Plaintiff,
)
)
v.
)
)
TIETEX INTERNATIONAL, LTD.,
)
)
Defendant.
)

7:17-cv-3037

7:17-cv-3038

MEMORANDUM ORDER
THOMAS D. SCHROEDER, District Judge.
These patent infringement actions are before the court on
several pretrial motions filed by the parties.
Group,

Inc.

(“Tietex”)

(“PFG”)
infringed

alleges
its

that

U.S.

Tietex

Patents

Precision Fabrics

International,

Nos.

8,796,162

Ltd.
('162

Patent) and 8,501,639 ('639 Patent) for flame-retardant technology
for fabrics. 1

1

The background has been set forth in multiple prior

PFG’s initial complaint claimed infringement of the ‘639 patent, and
its later complaint claims infringement of the ‘162 patent, which is
allegedly a continuation of the ‘639 patent. With respect to all pending

opinions

and

will

not

be

repeated

here.

(Docs.

57

(claim

construction) and 152 (summary judgment)).
The court has considered the briefing and attachments for all
pending motions, which are extensive.

An all-day hearing on the

motions was held on February 23, 2018.

To the extent the parties

at

the

hearing

raised

specific

evidentiary

objections

not

addressed herein, the court relies on its rulings and reasons
articulated during the hearing.

The purpose of this memorandum is

to resolve the bulk of the remaining objections, articulate the
court’s reasoning, and provide the parties sufficient information
to resolve their disputes as to the crafting of proposed jury
instructions.

Any motion in limine not specifically addressed

below will be addressed shortly by separate order.
A.

Tietex Motion in Limine No. 1 (Exclude Opinion of Dr.
Bhat) (Doc. 205)

The central dispute in this case relates to claims in PFG’s
patents that require the use of an “intumescent.”

The court has

construed the term “intumescent” as describing “a substance that
swells and chars upon exposure to heat or flame.”
21.)

(Doc. 57 at 20-

The parties have stipulated that Tietex’s accused coating,

SV-X41, chars under exposure.

Thus, the disputed issue for trial

as to this claim is whether it “swells” when so exposed.

motions, the docket filings are substantively identical in each case.
All docket references are to case 1:17cv3037 unless otherwise noted.

2

Tietex moves to exclude the opinions of PFG’s retained expert
witness, Gajanan S. Bhat, Ph.D., on several grounds under Federal
Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals,
Inc., 509 U.S. 579 (1993).

In short, Dr. Bhat opines that SV-X41

swells when exposed to heat or flame and does so in several
applications, whether equal to or in excess of that claimed to be
used by Tietex in its products.

Tietex contends that Dr. Bhat is

not an expert in chemistry and has “extremely limited experience
with intumescent coatings,” which renders his testing unreliable
because he used a flawed methodology in testing to determine
whether the SV-X41 coating of Tietex swells upon exposure to heat
or flame.

(Doc. 206 at 2.)

Tietex faults Dr. Bhat for conducting

his testing on what its expert, Dr. Richard Horrocks, contends is
an excessive amount of SV-X41 and for using a substrate (namely,
aluminum) that Dr. Horrocks contends is not inert but rather
interacts with the coating to cause swelling.

PFG responds that

Dr. Bhat is well-qualified to measure the SV-X41 coating upon
exposure to heat or flame, that the court has already addressed
challenges to the amount of SV-X41 tested by permitting Dr. Bhat
to conduct additional testing of lesser amounts of the coating,
and that Tietex’s challenge to the use of aluminum is tardy (not
having been raised as to Dr. Bhat’s earlier testing with aluminum,
about which he was deposed without criticism) and insufficient to
render the results unreliable.
3

The court has devoted significant time and resources issues
arising out of the parties’ fight over testing in this case.

The

court has previously found that when Tietex appeared to concede in
the course of this litigation that Dr. Bhat’s testing showed that
SV-X41 swells when applied in certain (Tietex claims larger) doses,
Tietex shifted the emphasis of its defense and claimed that lesser
applications in the amount actually used on Tietex’s products (what
its

expert,

Dr.

Horrocks,

characterizes

applications) do not swell when exposed.
response,

Dr.

Bhat

tested

SV-X41

in

as

“thermally

thin”

(Doc. 174 at 8.)

amounts

that

replicates those used by Tietex in its applications.

PFG

In

claims

In doing so,

Dr. Bhat tested the coating on an aluminum foil substrate.

Tietex

now contends that aluminum is flawed as a substrate because it
could interact with the SV-X41 to cause swelling.
The court need not engage in an extended Daubert analysis.
Suffice it to say that Tietex’s position is based on the opinion
of Dr. Horrocks, which a jury may or may not find credible.
also rebutted by Dr. Bhat’s testing results.

It is

Moreover, as PFG

notes, Dr. Horrocks’s opinion is subject to criticism because he
failed to challenge Dr. Bhat’s previous use of an aluminum pan as
a substrate in earlier testing. 2

Therefore, it is a factual matter

2

And, as noted infra, the court is granting PFG’s motion to limit Dr.
Horrocks’s opinions as to Dr. Bhat’s use of an aluminum pan as a substrate
in earlier testing.

4

for the jury.

For these reasons, the court declines to find that

this challenge renders Dr. Bhat’s testing and results unreliable,
and the motion to exclude Dr. Bhat and his opinions will be denied.
B.

Tietex Motion in Limine No. 3 (Prior Court and IPR
Proceedings) (Doc. 209)

Tietex moves to preclude PFG from introducing or using any
evidence relating to (1) prior disputes in the litigation; (2)
outcomes

of

prior

proceedings

in

this

case;

and

(3)

the

determinations of the Patent Trial and Appeal Board (“PTAB”) during
inter partes review (“IPR”) proceedings.

(Doc. 210 at 1.)

PFG

responds that it does not intend to offer evidence of prior
disputes in the litigation or outcomes of prior proceedings in
this case, as noted in grounds (1) and (2) above, except that it
claims

that

the

court’s

denial

of

Tietex’s

proposed

claim

construction should be admissible on the issue of willfulness.
(Doc. 243 at 2-3.)

Therefore, the court grants this motion as to

grounds (1) and (2) above.

For the reasons stated in PFG’s motion

in limine number 5, the court grants Tietex’s motion as to ground
(2)

without

regarding

prejudice

the

court’s

to

PFG’s

denial

right
of

to

introduce

Tietex’s

evidence

proposed

claim

construction for the limited purpose of establishing willfulness.
Of course, the parties are not precluded from relying on their
opponent’s responses to discovery, absent other objection.
As to ground (3), PFG agrees that the determinations of the

5

IPR proceedings generally should not be admitted.
4.)

(Doc. 243 at

Tietex contends that while the PTAB proceedings and their

outcome are irrelevant, the fact Tietex filed its IPR application
for the ‘639 patent (and expended substantial resources doing so)
is relevant to rebut claims that any alleged infringement was
willful.

(Doc. 249 at 4.)

PFG responds that the IPR petition

should be excluded because it is irrelevant and would be confusing
to the jury due to the PTAB’s standards for such proceedings.
(Doc. 243 at 10.) Because Tietex’s motion is directed to excluding
the outcomes of the PTAB proceedings, the court need not address
its

contention

that

it

should

be

able

to

introduce

its

IPR

petition. 3

3

Tietex did not file the petition until August 14, 2014, one day short
of a year after PFG’s lawsuit over the ‘639 patent was filed.
But
“timing does matter.” See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1340
(Fed. Cir. 2016) (citing Halo Electronics, Inc. v. Pulse Electronics,
Inc., 136 S. Ct. 1923, 1933 (2016)); cf. id. (finding that an infringer
“cannot insulate itself from liability for enhanced damages by creating
an (ultimately unsuccessful) invalidity defense for trial after engaging
in the culpable conduct . . . .”). Thus, reliance on the IPR petition
has limited value to Tietex. SSL Servs., LLC v. Citrix Sys., Inc., 769
F.3d 1073, 1092-93 (Fed. Cir. 2014) (finding that the actions of the
Patent Trade Office have “limited value . . . to establish a good faith
belief of invalidity”).
If Tietex were to successfully seek the
admission of its IPR petition, the court would require the outcome of
the proceeding be made known to the jury so as to avoid undue confusion.
Moreover, it would follow the lead of several district courts (that have
admitted evidence from completed IPR proceedings) to require jury
instructions that explain the different standards applicable to the IPR
proceedings. See, e.g., StoneEagle Servs., Inc. v. Pay–Plus Solutions,
Inc., No. 8:13–CV–2240–T–33MAP, 2015 WL 3824208, at *8 (M.D. Fla. June
19, 2015); Universal Electronics, Inc. v. Universal Remote Control, Inc.,
No. SACV 12–00329 AG, 2014 WL 8096334, at *7 (C.D. Cal. Apr. 21, 2014);
Oracle America, Inc. v. Google, Inc., Civ. No. 10–03561, 2012 WL 1189898,
*3 (N.D. Cal. Jan. 4, 2012).

6

The court therefore grants Tietex’s motion as to ground (3).
Unless permitted elsewhere in this order, the parties shall not,
directly or through their witnesses, refer to or seek to introduce
the PTAB proceedings, absent permission from the court.
C.

PFG Motion in Limine No. 1 (Non-Infringing Alternatives)
(Doc. 183) & Motion to Strike Tietex’s Supplemental
Interrogatory Response (Doc. 228)

PFG

moves

to

preclude

Tietex

from

introducing

evidence

regarding alleged non-infringing alternatives (to oppose PFG’s
lost-profits claim) on the grounds that Tietex failed to timely
disclose

them

in

response

precisely to that subject.

to

PFG’s

interrogatories

(Doc. 184 at 5.) 4

directed

PFG also moves to

strike as untimely Tietex’s second supplemental response to PFG’s
Interrogatory No. 7, which Tietex filed contemporaneously with its
response to PFG’s motion.

(Doc. 228.)

This dispute begins with PFG’s second set of interrogatories,
which PFG served on Tietex on August 19, 2014.

PFG specifically

requested,

“[i]dentify

among

other

things,

that

Tietex

and

describe any fabrics that Tietex contends are actual or potential
non-infringing alternatives to any inventions claimed by any of
the claims of U.S. Patent 8,501,639 for use as filler cloth in the

4

PFG also notes that Tietex failed to verify its first amended responses,
in violation of Federal Rule of Civil Procedure 33(b). (Doc. 184 at 4.)
Tietex contends that its prior responses have been incorporated into its
verified second amended responses such that both sets now constitute
properly amended responses. (Doc. 190 at 11 n.5.) To this extent, the
court deems the defect of lack of verification cured.

7

construction of a mattress or otherwise.”

(Doc. 184-1 at 7.) 5

Nearly four months later, Tietex responded with objections to the
scope of the interrogatory and a statement that its own accused
products are non-infringing alternatives.

(Id. at 7-8.)

The

Magistrate Judge properly found that by its delay, Tietex had
waived its objections.

(Doc. 90 at 6-7.)

Approximately one year later, on December 9, 2015, Tietex
served an amended response.

By then, fact discovery had been

closed for approximately six months, and expert discovery had been
closed over one month. 6

In this updated response, Tietex stated:

The term “any fabrics that Tietex contends are actual or
potential non-infringing alternatives” encompasses the
entire universe of fabrics manufactured by Tietex or
others which do not satisfy each and every claim
limitation of at least one valid claim in the subject
patent.
For example, there are many different flame
retardant fabrics that can be used in the environments
in which the fabrics described in the patents-in-suit
could be used. For example, each of Tietex’s products
that have been accused of infringing the patents-in-suit
patent are non-infringing alternatives to the products
5

In addition, PFG requested that Tietex “[i]dentify and describe any
plan, project, or attempt to design and/or redesign any Accused Product
to avoid infringement or claims of infringement of the ʼ639 Patent, and
explain in detail the nature and description, dates of, and any costs
associated with, any such plan, project, or attempt to design and/or
redesign.”
(Doc. 184-1 at 8.)
In its response, Tietex similarly
objected to the interrogatory and stated “there has been no attempt to
design and/or redesign any of Tietex's products in order ‘to avoid
infringement or claims of infringement’ because none of Tietex's products
infringe the '639 patent.” (Id.) However, it is unclear from the record
what response, if any, Tietex provided as to this interrogatory in its
first amended response.
6 Fact discovery closed on June 1, 2016.
However, the parties agreed to
conduct the depositions of Tietex’s 30(b)(6) designee and Martin Wildeman
on June 5 and 9, 2015, respectively.

8

described and claimed in the patents-in-suit. As other
examples, alternative fabrics also include those flame
retardant fabrics made by competitors of Tietex and PFG
for use in mattresses and for other products. Some of
these alternative fabrics include fabrics sold by Hanes,
PGI, PCC, DuPont, Soltex, Johnson Textiles, Performance
Fabrics and Fiber, Precision Textiles, PCC, Freudenberg,
and Pratrivero.
PFG is aware of these fabrics as
indicated by internal PFG documents produced to Tietex
during the course of this action. In addition, there
may be other alternative non-infringing fabrics that may
be presented by Tietex to the Court, but those have not
specifically been determined as of yet. Tietex reserves
the right to supplement this interrogatory response as
such decisions are made.
(Doc. 184-2 at 6.)

This response fails to identify any specific

fabric by any manufacturer.

Prior to the filing of the present

motion in limine, PFG never objected to Tietex’s amended response
or moved for an order to compel a further response.

Nor did Tietex

seek to amend its response with any further specificity.
Tietex now seeks to offer at trial evidence of several noninfringing alternatives: (1) fabrics sold by other competitors in
the market; (2) a non-coated filler cloth fabric developed by
Tietex during the course of the litigation; and (3) a needle-punch
fabric sold by PFG.
pronged defense.
were

proper

alternatives

and
were

(Doc. 190-10 at 3-6.)

Tietex offers a two-

First, it contends that its discovery responses
that

the

existence

nevertheless

“made

evidence disclosed in discovery.

of

all

known”

non-infringing
to

PFG

through

(Doc. 262 at 11-12.)

Second,

Tietex contends that acting “out of an abundance of caution,” it
has cured any notice problem because it served a lengthy second
9

supplemental interrogatory response on July 21, 2017, which, among
other things, specifically identified “PFG’s needlepunch flame
retardant filler cloth” and Tietex’s line of “stitchbonded, flame
retardant filler cloth that does not use a flame retardant coating”
as available non-infringing alternatives.
190-10 at 3-6.)

(Doc. 190 at 11; Doc.

This supplemental response indicates that Tietex

intends to introduce evidence and testimony at trial of “these and
all other non-infringing alternatives it has identified” through
its damages expert, Dr. Alford.

(Doc. 190-10 at 5.)

Tietex

contends that PFG was aware of the evidence of non-infringing
alternatives since 2014 and that to grant PFG’s motion would cause
“the trial of this case [to] proceed based on invented ‘facts’
that bear no relation to reality.”

(Doc. 190 at 21.)

In order to recover lost profits, the patent owner must
establish “a causal relation between the infringement and its loss
of profits.”

Ericsson, Inc. v. Harris Corp., 352 F.3d 1369, 1377

(Fed. Cir. 2003) (quoting BIC Leisure Prods., Inc. v. Windsurfing
Int'l, Inc., 1 F.3d 1214, 1218 (Fed. Cir. 1993)).

The patentee

must demonstrate “a reasonable probability that ‘but for’ the
infringing activity, the patentee would have made the infringer's
sales.”

Id.

(quoting

Crystal

Semiconductor

Corp.

v.

TriTech

Microelecs. Int'l, Inc., 246 F.3d 1336, 1353 (Fed. Cir. 2001)).
Once

the

inference,

patentee
the

establishes

burden

shifts

the
to

10

reasonableness

the

accused

of

infringer

this
to

demonstrate that the inference is unreasonable for some or all of
the lost profits.

Micro Chem., Inc. v. Lextron, Inc., 318 F.3d

1119, 1122 (Fed. Cir. 2003) (citing Rite-Hite Corp. v. Kelley Co.,
56 F.3d 1538, 1545 (Fed. Cir. 1995)).

An accused infringer may

oppose a lost-profits claim by establishing the existence of
available non-infringing alternatives within the relevant market.
See Grain Processing Corp. v. American Maize–Prods., 185 F.3d 1341,
1350–51 (Fed. Cir. 1999).
Interrogatories
Procedure

33.

are

governed

“Contention

by

Federal

interrogatories

Rule

of

Civil

. . . serve

an

important purpose in helping to discover facts supporting the
theories of the parties” and to “narrow and sharpen the issues
thereby confining discovery and simplifying trial preparation.”
Woods v. DeAngelo Marine Exhaust, Inc., 692 F.3d 1272, 1280 (Fed.
Cir. 2012) (citing Fed. R. Civ. P. 33 advisory committee’s note
(1970 Amendment, subdivision (b)).

Courts have recognized that

answers to contention interrogatories may evolve over time, id.,
and “an answer to an interrogatory does not conclusively bind the
answering party in all instances,” Marcoin, Inc. v. Edwin K.
Williams & Co., 605 F.2d 1325, 1328 (4th Cir. 1979).

See also

Intellect Wireless, Inc. v. T-Mobile USA, Inc., 735 F. Supp. 2d
928, 935 n.5 (N.D. Ill. 2010) (“[C]ourts, particularly in patent
suits,

generally

still

do

not

treat

responses

interrogatories as binding.” (collecting cases)).
11

to

contention

However, a party has an ongoing duty to supplement or correct
its disclosure or response “in a timely manner if the party learns
that

in

some

material

respect

the

disclosure

or

response

is

incomplete or incorrect, and if the additional or corrective
information has not otherwise been made known to the other parties
during the discovery process or in writing.”
26(e)(1)(A); Woods, 692 F.3d at 1280.

Fed. R. Civ. P.

The collateral disclosure

of information during the discovery process may satisfy this
requirement, provided that the “information that would normally be
contained in a supplemental discovery response [be] in such a form
and of such specificity as to be the functional equivalent of a
supplemental discovery response; merely pointing to places in the
discovery where the information was mentioned in passing is not
sufficient.”

L-3 Commc'ns Corp. v. Jaxon Eng'g & Maint., Inc.,

125 F. Supp. 3d 1155, 1169 (D. Colo. 2015) (citing Jama v. City
and County of Denver, 304 F.R.D. 289, 298–99 (D. Colo. 2014)).
Rule of Civil Procedure 37 provides that a party who fails to
properly supplement its interrogatory response “is not allowed to
use that information or witness to supply evidence on a motion, at
a hearing, or at a trial, unless the failure was substantially
justified

or

is

harmless.”

Fed.

R.

Civ.

P.

37(c)(1).

In

determining whether the party’s failure to make the required
disclosures was substantially justified or harmless, the court may
consider the following factors:
12

(1) the surprise to the party against whom the evidence
would be offered; (2) the ability of that party to cure
the surprise; (3) the extent to which allowing the
evidence would disrupt the trial; (4) the importance of
the evidence; and (5) the nondisclosing party's
explanation for its failure to disclose the evidence.
Bresler v. Wilmington Tr. Co., 855 F.3d 178, 190 (4th Cir. 2017)
(quoting S. States Rack & Fixture, Inc. v. Sherwin–Williams Co.,
318 F.3d 592, 597 (4th Cir. 2003)).

The party that failed to

disclose the information bears the burden of establishing that the
nondisclosure was either harmless or substantially justified.

Id.

(citing Wilkins v. Montgomery, 751 F.3d 214, 222 (4th Cir. 2014)).
With this legal landscape in mind, the court turns to the question
at hand.
PFG’s interrogatory asked Tietex to “identify and describe”
all fabrics it contends were actual or potential non-infringing
substitutes.

(Doc. 184-1 at 7.)

This contention interrogatory

sought to learn whether Tietex would contend that PFG’s alleged
damages are limited, and if so, by what non-infringing products.
Such

a

determination

generalities.

is

fact-specific

and

not

subject

to

SynQor, Inc. v. Artesyn Techs., Inc., No. 2:07-CV-

497-TJW-CE, 2011 WL 3625036, at *10–11 (E.D. Tex. Aug. 17, 2011).
Having waived any objection to the scope of this interrogatory as
a result of its untimely response, Tietex had a duty to respond
with specificity and to timely supplement.

(Doc. 90 at 6-7.)

Not

until after the conclusion of both fact and expert discovery did

13

Tietex amend its original response, and then only to provide the
names of several competitors that allegedly sell non-infringing
alternatives.

Tietex

did

not

disclose

any

fabric

with

any

specificity, nor did it cite to the record where any fabric had
been identified.

(See Doc. 190-10.)

This response was clearly

inadequate and failed to comply with the disclosure requirements
of Rules 33 and 26(e).

Yet, PFG did not seek judicial intervention

to have the response declared inadequate or to compel a more
complete description.
In light of the discovery history of this case, the court
finds that as to fabrics sold by competitors that are referenced
in the report of Tietex’s damages expert, Dr. Alford, Tietex’s
failure to previously disclose such evidence was harmless, as PFG
cannot reasonably claim surprise.

Neither party disputes the

existence of non-infringing alternatives within at least a portion
of the relevant market. 7

In his expert report and deposition

testimony, Dr. Alford sought to respond to claims regarding market
segmentation raised by PFG’s damages expert.
10.)
on

(Doc. 237-4 at 5-

Among other things, Dr. Alford testified that his opinions
damages

rested

on

the

conclusion

that

non-infringing

alternatives were sold by several competitors within the market,

7

PFG’s own damages expert, Joel Wacek, admits the existence of noninfringing alternatives sold by competitors within the segment of the
market, which he contends excludes the national mattress manufacturers.
(Doc. 190-1 at 4-5.)

14

including Dupont, Hanes, Inman Mills, Pratrivero, HDK, and PCC.
(Doc. 190-3 at 3; Doc. 190-4 at 4-7.)

PFG had ample opportunity

to cross-examine Dr. Alford regarding the basis of this opinion.
PFG failed to take any action to cure any prejudice arising from
the disclosure, or lack thereof, of such information for over two
years.
The evidence is important, as it relates directly to the
calculation of damages at trial, which favors exclusion.
States,

318

F.3d

at

598–99.

Furthermore,

Tietex

See S.
was

not

substantially justified in failing to adequately respond to PFG’s
interrogatory request after the close of discovery.

See id.

Nevertheless, exclusion is not warranted where the evidence of
non-infringing alternatives sold by other competitors remains a
central dispute within this case and PFG has been aware of Tietex’s
intention to introduce this specific evidence for well over two
years. 8
Therefore, PFG’s motion to exclude evidence of non-infringing
alternatives sold by competitors in the market is denied as to any

8

There is a separate question whether Dr. Alford’s failure to identify
particular alleged non-infringing products dooms his opinions as lacking
foundation.
Dr. Alford testified that he did not have information
regarding the individual products sold by the other market participants,
apart from those sold by Tietex and PFG. (Doc. 217-4 at 36.) Indeed,
Tietex admits that it remains unaware of the technical names of
acceptable non-infringing alternatives sold by its competitors. (Doc.
190 at 9 n.3.)
Whether this failure renders Dr. Alford’s testimony
fatally deficient will be addressed separately in connection with PFG’s
motion directed to that witness.

15

products whose sales are referenced in Dr. Alford’s expert report
or

deposition

testimony,

but

otherwise

granted

as

to

other

available non-infringing alternatives sold by competitors apart
from PFG and Tietex.

See ZiiLabs Inc. v. Samsung Elecs. Co., No.

2:14-cv-203-JRG-RSP, 2015 WL 6690403, at *3 (E.D. Tex. Nov. 2,
2015) (granting in part motion to strike references to a noninfringing alternative not raised in expert’s original report
where the record indicated that the defendant could have disclosed
the information within its interrogatory response, but declining
to exclude other non-infringing alternatives disclosed in direct
response to statements regarding the availability of those noninfringing alternatives in opposing party’s expert report).

To be

sure, while Tietex is not precluded from relying on the alleged
products represented by Dr. Alford’s computations for alleged noninfringing

products,

it

nevertheless

retains

the

burden

of

establishing a factual predicate that those products are in fact
non-infringing.
With regard to the two non-infringing alternatives disclosed
in Tietex’s second amended response served in response to PFG’s
motion in limine - PFG’s needle-punch flame retardant filler cloth,
and Tietex’s line of stitchbonded, flame retardant filler cloth
that does not use a flame retardant coating - Tietex cannot
reasonably contend that its discovery responses were proper under
the circumstances.

Its contention that these alternatives were
16

covered by the general description contained in its first amended
response is wholly without merit. (Doc. 262 at 9.)

Disclosing

generally the existence of potential non-infringing alternatives
in deposition testimony during the final days of fact discovery or
expert discovery does not “make known” to PFG that Tietex intends
to contend these products constitute non-infringing alternatives.
This is particularly true where neither was disclosed in any of
Tietex’s expert reports or in Tietex’s first amended response.
See Woods, 692 F.3d at 1282 (affirming exclusion of attempted
supplement

where

defendant

failed

to

answer

and

supplement

responses to contention interrogatory and disclosed of prior art
without additional explanation on the final day of the scheduled
discovery period); cf. L-3 Commc'ns Corp. v. Jaxon Eng'g & Maint.,
Inc., 125 F. Supp. 3d 1155, 1168–69 (D. Colo. 2015) (holding that
supplemental disclosure was not necessary, where information was
disclosed
report).

in

deposition

testimony

and

the

defendant’s

expert

At a minimum, Tietex should have disclosed the existence

of these non-infringing alternatives no later than in its first
amended response after the close of discovery in December of 2015.
Therefore, the court must determine whether Tietex’s failure
to

timely

disclose

these

non-infringing

substantially justified or harmless.

alternatives

was

Fed. R. Civ. P. 37(c)(1).

PFG points to the very late disclosure and argues that exclusion
is proper because Tietex has taken a position inconsistent with
17

its prior discovery responses and its own damages analysis.
202 at 11-15.) 9
timely

(Doc.

Accordingly, PFG contends, Tietex’s failure to

supplement

cannot

substantially justified.

be

considered

either

harmless

or

(Id.)

Tietex argues that even if the court finds its disclosure to
be untimely, the evidence should not be excluded because PFG would
not be prejudiced.

(Doc. 190 at 21.)

Tietex contends that PFG

has been on notice that such evidence would be presented and slept
on its rights to compel more complete responses or seek additional
discovery, and Tietex says it remains willing to provide witnesses
for testimony.
been

aware

(Doc. 190 at 13-14.)

that

Tietex’s

According to Tietex, PFG has

non-coated

filler

cloth

is

a

non-

infringing alternative since June 5, 2015, when Tietex’s Rule
30(b)(6)

deponent,

Robert

Wallace,

testified

that

Tietex

had

developed the fabric and was in the process of commercializing it
within the market for flame retardant filler cloth.

(Doc. 190 at

6; Doc. 190-5 at 3-7.)

In addition, Tietex notes that PFG

questioned

Executive

Tietex’s

Chief

Officer,

about this developmental product as well.

Martin

Wildeman,

(Doc. 190-6 at 3-4.)

Tietex also claims it provided PFG with samples of this product in

9

PFG claims that Tietex disclosed its intention to present evidence that
its own non-coated filler cloth constituted an available non-infringing
alternative
during
the
parties’
negotiation
of
proposed
jury
instructions before trial. (Doc. 202 at 11-12.)

18

March of 2016 (Doc. 190-7), and regularly supplemented its sales
information,

per

the

parties

agreement,

which

reflected

that

Tietex no longer sold the accused products and included figures
for this new fabric (Doc. 190 at 7). 10

Similarly, Tietex notes

that PFG’s damages expert, Joel Wacek, identified non-infringing
alternatives during his deposition, including needle-punch fabric
as well as woven and spun-lace fabrics.

(Doc. 190-2 at 1-4, 10.)

PFG responds in part that the records relating Tietex’s product at
issue were largely buried in Tietex’s production of hundreds of
thousands of pages, and that the production of sales records made
no effort to direct any attention to the new product or the fact
that Tietex would contend it was an available non-infringing
alternative.
Having carefully considered the Southern States factors, the
court concludes that the failure to disclose these two products as
allegedly

non-infringing

substantially justified.
PFG

may

have

been

on

alternatives

is

neither

harmless

nor

While it may be one thing to say that
notice

of

the

existence

of

these

two

alternatives, it is quite another for Tietex to seek to incorporate
it into its damages analysis as a non-infringing alternative well
after the close of all fact and expert discovery and on the eve of

10

While Tietex maintains that it no longer sells the accused products,
it previously represented to this court that it continued to sell them
at least until October of 2016. (Doc. 178 at 13.)

19

trial.

This is especially so where Tietex itself concedes it was

aware of its intention to rely on these two products as noninfringing alternatives for over two and one-half years yet made
absolutely no effort to seek to amend its damages expert’s report
or its interrogatory responses, or even write a letter to opposing
counsel to provide such notice.
As noted above, establishing the existence of available noninfringing alternatives involves a highly fact-specific inquiry
into the product and relevant market at issue.

The relevant

question in determining prejudice is not “whether [a] plaintiff[]
knew of the existence of the [non-infringing alternatives] and
should have guessed they would be put forth as an alternative,”
but

rather

“whether

[a]

plaintiff[]

will

be

prejudiced

by

defendant's failure to disclose them as such during discovery.”
Parker-Hannifin Corp. v. Champion Labs., Inc., No. 1:06-CV-2616,
2008

WL

1843922,

added), modified

at
on

*8

(N.D.

Ohio

Apr.

clarification, No.

3166318 (N.D. Ohio Aug. 4, 2008).

22,

2008)

1:06-CV-2616,

(emphasis
2008

WL

See also SynQor, 2011 WL

3625036, at *10–11 (denying motion for new trial based on exclusion
evidence of non-infringing alternatives that were disclosed after
the close of fact discovery, relying in part on the fact the party
was deprived of the opportunity to conduct the “highly technical
discovery”

required

to

assess

alternatives).
20

the

alleged

non-infringing

Here, Tietex’s failures are evident with respect to its
attempt to introduce this testimony through its damages expert,
Dr. Alford.

Dr. Alford issued his expert report on August 27,

2015, nearly three months after the close of fact discovery. (Doc.
202-3 at 2.)

In that report, he opined that PFG and the other

competitors in the market would have captured all of Tietex’s
alleged infringing sales based on their respective market shares.
(Id. at 8.)

While Dr. Alford explicitly relies on the existence

of non-infringing alternatives provided by competitors within the
market, he assumes Tietex would have completely exited the market.
(Id.)

Tietex has provided no evidence that Dr. Alford considered

these two non-infringing alternatives in reaching his opinion, nor
does the court find any evidence in the record to support his
contention.

Tietex attempts to explain this omission by claiming

that “Dr. Alford had not fully developed his opinions concerning
non-infringing

alternatives”

at

the

time

of

the

report

and

characterizing this opinion as a “secondary” calculation designed
to demonstrate the flaws within Wacek’s analysis.
n.6.) 11

(Doc. 262 at 17

Neither explanation is credible or acceptable.

11

If PFG was

Tietex claims that “[a] staple of Dr. Alford’s opinion is that noninfringing alternatives exist for the entire market for [flame retardant]
filler cloth, and thus PFG is entitled to no lost profits.” (Doc. 262
at 17 n.6.)
However, as Tietex acknowledges in a related brief (Doc.
248 at 11), the existence of non-infringing alternatives does not
preclude a patentee from recovering lost profits based on its market
share, BIC Leisure Prods., Inc. v. Windsurfing Int'l, Inc., 1 F.3d 1214,
1218 (Fed. Cir. 1993).

21

in fact placed “on notice” of Tietex’s intention to raise such
contentions at the conclusion of fact discovery, surely Tietex’s
own expert would have been aware of such contentions as well.
not, he should have been made aware of it. 12

If

Tietex offers no

explanation for its failure to seek to supplement Dr. Alford’s
report.

See Fed. R. Civ. P. 26(a)(2)(D), (E).

At this late stage in the litigation, PFG has limited ability
to cure the surprise arising from this violation.

Even though

Tietex disclosed this information several months in advance of the
trial, the only available cure to PFG at this point would be to
permit PFG to conduct additional discovery on the eve of trial,
which would cause significant burden and disruption, or for the
court to continue trial, which would result in a significant
disruption.

See S. States, 318 F.3d at 598 (noting granting a

continuance “would have significantly disrupted the trial, because
witnesses from distant places had testified and if the case were
continued and tried again, much of the parties' trial preparation
would be rendered obsolete”).
Tietex’s

contention

at

the

This prejudice is exacerbated by
hearing

that

it

seeks

to

present

evidence that it could have commercialized its allegedly noninfringing alternative earlier in the infringement period so as to

12

Dr. Alford was deposed approximately one week after Wacek’s deposition,
and there was apparently no effort to incorporate consideration of
Wacek’s mention of PFG’s own products as non-infringing alternatives (or
not) into Dr. Alford’s opinions at that time.

22

reduce

or

eliminate

its

damages.

Such

a

showing

involves

additional proof that was never properly disclosed.
For these same reasons, Tietex has failed to meet its burden
of demonstrating it was substantially justified in not disclosing
these alleged non-infringing alternatives at the time of its first
amended response.

See Baltimore Aircoil Co., Inc. v. SPX Cooling

Techs. Inc., No. CV CCB-13-2053, 2016 WL 4426681, at *18–19 (D.
Md. Aug. 22, 2016) (granting motion to exclude evidence of “designaround alternatives” where party failed to provide “any documents
specifying design-around alternatives, notwithstanding multiple
discovery requests to which [such alternative] would have been
responsive” until the final day of fact discovery).
Therefore, as to the alleged non-infringing products by PFG
and Tietex, the court grants PFG’s motion to preclude Tietex from
incorporating either into Dr. Alford’s damages analysis.

However,

because PFG’s damages witness, Wacek, opined that he did not
consider PFG’s own product as a non-infringing alternative, Tietex
will be permitted to cross examine him as to the reasons he did
not

do

so. 13

PFG

has

also

moved

supplemental interrogatory response.

13

to

strike

Tietex’s

second

But motions to strike apply

At the hearing, counsel for PFG contended that its product at issue
cannot be considered a non-infringing alternative because, although not
patented, it was proprietary. Because to prevail on this issue PFG would
have to demonstrate that customers would not have obtained the product
from a third party, Rite-Hite, 56 F.3d at 1548, this factual issue
remains for proof at trial.

23

to pleadings.

See Fed. R. Civ. P. 12(f); 5C Charles A. Wright et

al., Federal Practice & Procedure § 1380 & n.8.50 (3d ed. 2004 &
Supp. 2014).

Rather than strike Tietex’s interrogatory response,

which is not a pleading, and except as provided above as to cross
examination

of

Wacek,

the

court

will

preclude

Tietex

from

presenting evidence of non-infringing alternatives excluded in
this order.

See Fed. R. Civ. P. 37(c)(1).

This response was

served only in response to PFG’s motion in limine, was grossly out
of time, lacks substantial justification, and imposes prejudice
that is not harmless.
D.

PFG Motion in Limine No. 2 (Post-Discovery Document
Production) (Doc. 185)

PFG seeks an order precluding Tietex from relying at trial on
any

documents

it

produced

after

the

close

of

permitting PFG to rely on any that are relevant.
Tietex

purposefully

misled

it

and

the

court

discovery

but

PFG claims that
when

it

earlier

represented it had fully responded to previous discovery, but
subsequently
documents

produced

that

almost

contain

2

million

“thousands

of

pages

of

wholly

unorganized
irrelevant,

nonresponsive pages (such as novels and spam e-mails).”
at 2, 13.)

(Doc. 186

By and large, many of these documents pre-date the

patents in suit.

Tietex responds that it has sought to comply

with overly-broad discovery requests, PFG should not be surprised
at the breadth of the production given the expansive scope of the

24

search terms it suggested (Doc. 191 at 10), and this is all moot
because Tietex does not intend to rely at trial on any of the
documents in dispute (Doc. 203 at 1-2).

PFG responds that Tietex

should have quality-checked the search terms to further narrow the
production and that, in any event, this is not a valid explanation
because

the

vast

majority

responsive to those terms.
This

discovery

proceedings

before

of

documents

produced

are

not

(Doc. 200 at 15-17.)

dispute
the

the

has

been

Magistrate

the

subject

Judge.

of

Because

prior
Tietex

represents that it does not intend to use any of the post-discovery
documents, it appears that PFG will obtain the relief it seeks.
Therefore, the motion in limine is granted.

Tietex shall not rely

on any document produced for the first time after the close of
discovery, absent prior agreement with PFG, prior approval by the
court, or prior use at trial by PFG that opens the door.
E.

PFG Motion in Limine No. 3 (Dr. Horrocks’s Aluminum
Opinion) (Doc. 213)

PFG moves to exclude the opinion of Tietex’s retained expert
witness, Dr. Horrocks, to the extent it challenges supplemental
testing of SV-X41 by PFG’s expert, Dr. Bhat, conducted on an
aluminum substrate.

PFG argues that Dr. Horrocks’s opinion is

untimely and violates the court’s order permitting supplemental
reports.
Federal

It also seeks to exclude Dr. Horrocks’s opinion under
Rule

of

Evidence

703

and

25

Daubert,

as

unreliable

and

speculative.

Tietex opposes the motion.

This issue is related to Tietex’s motion in limine number 1
above.

Late in the litigation, after Tietex shifted its focus of

its defense to the levels of SV-X41 Dr. Bhat applied to his testing
samples, the court granted PFG’s motion to supplement Dr. Bhat’s
report to address this new emphasis.

In doing so, the court also

permitted Tietex to “supplement the report of Dr. Horrocks –
limited to any direct response to the material contained in Dr.
Bhat’s supplemental report at issue.”
added).)

(Doc. 174 at 9-10 (emphasis

In his supplemental report, Dr. Horrocks criticized Dr.

Bhat’s supplemental testing (which concludes that a 50-micron
thick coating of SV-X41 swelled when exposed to heat or flame) as
unreliable because Dr. Bhat applied the SV-X41 to an aluminum foil
substrate, which Dr. Horrocks contends is not inert.
at 26.)

(Doc. 214-1

Drawing from scientific literature regarding the chemical

characteristics of aluminum and SV-X41, Dr. Horrocks opined that
the aluminum substrate would cause aluminum oxide on the aluminum
foil substrate to increase in size.

(Id. at 19-26.)

Relying on

his previous testing of SV-X41 on what he contends is an inert
surface and which he says resulted in no swelling, Dr. Horrocks
concluded that any swelling of SV-X41 observed by Dr. Bhat in his
supplemental report was attributable to the reaction of the coating

26

with the non-inert aluminum surface.

(Id. at 26.) 14

Dr. Horrocks

went further, however, to state that this opinion applied to Dr.
Bhat’s previous testing on aluminum pans set forth in his earlier
reports, even though Dr. Horrocks did not previously provide this
criticism.

(Id. at 20.)

PFG first argues that Dr. Horrocks never criticized Dr. Bhat’s
previous use of aluminum pans during his deposition in November
2015 and therefore should be precluded from offering any opinion
now.

PFG contends that Dr. Horrocks’s new opinion is untimely, in

violation of Federal Rule of Civil Procedure 26 and its delay is
neither substantially justified nor harmless.
37(c)(1).

Fed. R. Civ. P.

PFG further contends that the opinions exceed the scope

of this court’s order that limited Tietex’s response to Dr. Bhat’s
last expert report.

Tietex responds that Dr. Horrocks was never

“invited” to criticize the aluminum pans during his previous
deposition.

(Doc. 214-2 at 9, 11-12; Doc. 236 at 5-6.)

It also

contends that Dr. Horrocks’s criticism is not a “new opinion” but
is

consistent

with

his

prior

testimony

regarding

the

proper

experimental protocol in his original deposition, which required
that testing be conducted on inert surfaces.

(Doc. 236 at 7-8.)

The court finds that, at least as it relates to Dr. Bhat’s

14

To the extent Dr. Horrocks claims to rely on his visual observations
of swelling on the SV-X41 tested on steel plates, the court has
previously excluded this opinion as unreliable. (Doc. 152 at 23-24.)

27

supplemental report, Dr. Horrocks’s aluminum opinion is responsive
to Dr. Bhat’s supplemental testing on aluminum foil and should not
be excluded, particularly in light of Dr. Horrocks’s November 2015
deposition testimony as to the need to use an inert substrate.
(See Doc. 145-11 at 12, 113.)

However, Dr. Horrocks’s criticisms

of the substrate used in Dr. Bhat’s prior testing (that is, apart
from the supplemental report) clearly exceeds the scope of the
court’s order, and it would be unfair to allow them now.

Dr.

Horrocks was specifically asked in a previous deposition about his
criticisms of all of Dr. Bhat’s earlier testing and did not
criticize use of the aluminum substrate used:
Q.
And other than disagreeing with the thickness that
he used for his testing do you disagree with any of the
other parameters that he used in his testing?
A.
No, I cannot criticise the results.
The results
are as he has produced.
I have no reason to suspect
that they were other than the true results.
(Doc. 145-11 at 191 (emphasis added).) 15
15

During Dr. Bhat’s deposition, Tietex’s counsel similarly accepted Dr.
Bhat’s statement that the aluminum pan was an inert substance and
declined to question him further on this topic:
Q.
Okay. So you used--So you used two surfaces [aluminum
and steel pans] that were inert; is that correct?
A.
That’s correct.
Q.
Okay, let’s exclude those . . . .
(Doc. 252-1 at 110.) Tietex’s counsel contended at the hearing he was
merely baiting the expert. While counsel’s statements are not the basis
for the court’s ruling, the court is not so persuaded. In addition,
Tietex’s counsel referred to aluminum pans as an inert surface in a
statement made to the court during the motion for partial summary
judgment, where counsel referenced the need to test the coating
“separately on an inert substrate, inert being something like aluminum
pans or steel or the glass fibers that Dr. Horrocks used.” (Doc. 154
at 59.) While this statement may not constitute a judicial admission,

28

In addition, Tietex had an ongoing duty to supplement its
expert’s report.

Fed. R. Civ. P. 26(e).

Given that Dr. Horrocks

admitted to holding this opinion at the time of his deposition in
November

of

2015

(Doc.

214-2

at

11-12),

as

well

as

in

his

supplemental report two years later, it cannot be considered timely
and clearly violates Rule 26.

See Akeva LLC v. Mizuno Corp., 212

F.R.D. 306, 310 (M.D.N.C. 2002) (“To construe supplementation to
apply whenever a party wants to bolster or submit additional expert
opinions would [wreak] havoc in docket control and amount to
unlimited expert opinion preparation.”); MJC Am., Ltd. v. Gree
Elec. Appliances, Inc. of Zhuhai, No. CV1304264SJOCWX, 2015 WL
12747825, at *3 (C.D. Cal. Apr. 27, 2015) (granting motion in
limine to exclude expert testimony regarding “those subject areas
about which [plaintiff’s experts] claimed to have no opinion at
their depositions”).
Tietex has also failed to establish that this violation was
either “substantially justified” or “harmless” to avoid exclusion
under Rule 37(c)(1).

See S. States, 318 F.3d at 597.

The surprise

resulting from the presentation of such evidence over two years

it does suggest a significant shift in Tietex’s litigation strategy.
See Fraternal Order of Police Lodge No. 89 v. Prince George's Cty., MD,
608 F.3d 183, 190 (4th Cir. 2010) (“Although a lawyer's statements may
constitute a binding admission of a party, any such statement must be
‘deliberate, clear, and unambiguous’ before we will afford it preclusive
effect.” (quoting Meyer v. Berkshire Life Ins. Co., 372 F.3d 261, 265
n. 2 (4th Cir. 2004)).

29

after

the

issuance

substantial.

of

Dr.

Bhat’s

rebuttal

report

would

be

The court permitted supplemental testing, well after

discovery closed, only as a matter of fairness to PFG in light of
what the court viewed was Tietex’s shifted defense.

For Tietex

to use a supplemental report - whose sole purpose was to respond
to Dr. Bhat’s supplemental testing – as an opportunity to reach
back to challenge earlier testing on grounds not previously raised,
particularly where the earlier deposition questioning of Dr. Bhat
suggested that there would be no challenge to use of an aluminum
pan as a substrate, would be grossly unfair.

Tietex thus lacks

any substantial justification for not having earlier provided this
opinion.
It is also not harmless.

After narrowing its defense of the

case to what Dr. Horrocks terms Dr. Bhat’s “thermally thick”
application of the SV-X41, Tietex now seeks to attack PFG’s testing
on

applications

comparable

to

of

the

Tietex’s

coating
use

of

that

it.

Dr.
See

Bhat
Russell

contends
v.

are

Absolute

Collection Servs., Inc., 763 F.3d 385, 398 (4th Cir. 2014) (holding
that district court did not abuse its discretion in excluding
untimely disclosure of evidence two months before trial where
“belated discovery materials presented an entirely new factual
basis” for defendant’s affirmative defense); Osunde v. Lewis, 281
F.R.D. 250, 258 (D. Md. 2012) (“[T]he rules of expert disclosure
are designed to allow an opponent to examine an expert opinion for
30

flaws and to develop counter-testimony through that party's own
experts.” (quoting S. States, 318 F.3d at 498)).
Trial is one week away.

It would be terribly disruptive to

grant a continuance or to reopen discovery (yet again) to allow
PFG to respond to Dr. Horrocks’s claims, especially considering it
was a reopening of discovery that led to Dr. Horrocks’s present
report.

The parties have had more than ample time to narrow the

dispute in this case.

See Hill v. Coggins, 867 F.3d 499, 508 (4th

Cir. 2017) (noting disruption to trial would arise where untimely
disclosed evidence would “substantially change the character of
the

case

and

render

obsolete

much

of

the

parties'

trial

preparation” (quoting Rambus, Inc. v. Infineon Techs. AG, 145 F.
Supp. 2d 721, 730 (E.D. Va. 2001)).

Even though the evidence may

be important, the court finds that exclusion is proper in this
instance,

particularly

where

Tietex

has

failed

to

provide

sufficient justification for this violation and exceeded the scope
of this court’s order.

See Silicon Knights, Inc. v. Epic Games,

Inc., No. 5:07-CV-275-D, 2012 WL 1596722, at *6 (E.D.N.C. May 7,
2012) (noting that the importance of the evidence is only one of
several factors and does not “tilt the scale” where the party
asserting the evidence’s importance “alone is to blame for creating
this situation” (quoting MicroStrategy Inc. v. Bus. Objects, S.A.,
429 F.3d 1344, 1357 (Fed. Cir. 2005)).
PFG further argues that Dr. Horrocks aluminum opinion should
31

be excluded entirely under Rule 702 and Daubert.

Under Rule 702,

expert

on

testimony

is

admissible

foundation and is relevant.”

if

it

“rests

a

reliable

E.E.O.C. v. Freeman, 778 F.3d 463,

466 (4th Cir. 2015) (quoting Westberry v. Gislaved Gummi AB, 178
F.3d 257, 260 (4th Cir. 1999)).

This court must “ensure that the

proffered expert opinion is ‘based on scientific, technical, or
other specialized knowledge and not on belief or speculation, and
inferences

must

be

derived

using

scientific

or

other

valid

methods.’”

Nease v. Ford Motor Co., 848 F.3d 219, 229 (4th Cir.

2017) (quoting Oglesby v. Gen. Motors Corp., 190 F.3d 244, 250
(4th Cir. 1999)).

The district court has “broad latitude” to take

into account any “factors bearing on validity that the court finds
to be useful.”

Freeman, 778 F.3d at 466 (quoting Westberry, 178

F.3d at 260).
Dr. Horrocks seeks to offer several opinions related to Dr.
Bhat’s use of an aluminum-based substrate for his supplemental
testing.

Although his most recent report is some 37 pages, the

opinions in dispute generally fall into one of the following
categories: first, aluminum is not chemically inert but rather
“highly reactive” (Doc. 214-1 at 11); second, SV-X41 will react
chemically to non-inert aluminum surfaces (id. at 10); third, Dr.
Bhat employed coatings with highly reactive substrates in his first
round of testing by using coated Tietex fabrics, his third round
of

testing

by

using

aluminum

pans,
32

and

his

fourth

round

of

supplemental testing by using aluminum foil (id. at 20); fourth,
the aluminum substrates in the third and the supplemental rounds
of

testing

would

react

with

the

coating

to

create

chemical

compounds that would “add to an increase in the thickness of the
SV-X41-coated aluminum foil (and pans) when heated,” (id. at 24);
and fifth, “[t]he aluminum foil (as well as the aluminum pans in
the third round of testing and the stainless steel pans in the
second round of testing) does not simulate the coated fabric that
results from the application of the SV-X41 coating to the Tietex
Accused Fabrics,” (id. at 25).

As a result of these opinions, Dr.

Horrocks concludes as a sixth opinion:

“because I used a proper

test protocol, employing a properly-sized coating on an inert
surface, replicative of the Tietex fabrics and observed no swelling
of the SV-X41 coating when it was exposed to heat or flame, it is
my opinion that all of the swelling observed by Dr. Bhat on his
roughly

50

micron-thick

coatings

in

his

Samples

1

and

2

is

attributable solely to the reaction of the coating components with
the non-inert aluminum foil substrate.”
PFG

does

not

challenge

Dr.

(Id. at 26.)

Horrocks’s

qualifications

to

evaluate the chemical reaction between SV-X41 and an aluminum
substrate.

However, PFG does challenge the reliability of his

opinions due to his failure to conduct any testing to support them.
Tietex responds that Dr. Horrocks need not have tested SV-X41 on
foil because he accepts that Dr. Bhat’s reported swelling but
33

concludes that his (Dr. Horrocks’s) testing on an inert substrate,
combined with his experience in the field of chemistry and relevant
scientific literature, fully explain the result.
“[A] key question to be answered in determining whether a
theory or technique is scientific knowledge that will assist the
trier of fact will be whether it can be (and has been) tested.”
Nease, 848 F.3d at 231 (quoting Daubert, 509 U.S. at 593).
is the essence of the scientific method.

That

Dr. Horrocks’s opinions

offering quantitative results are precisely the type of scientific
opinion that can be proved or disproved by testing.

Both parties’

experts have conducted endless competing tests.
Dr.

Horrocks’s

principles

and

opinions

reactivity

scientific literature.

of

regarding
aluminum

the
is

general
well

chemical

supported

by

Dr. Horrocks supports his opinion as to

PFG’s testing on an aluminum foil substrate with his separate,
previous testing on what he contends is an inert, glass fiber
substrate that he contends revealed no swelling.
PFG contends that Dr. Horrocks never tested his opinion on
any aluminum foil, citing Nease, 848 F.3d at 232 (4th Cir. 2017)
(“Although Sero's theory is plausible and “may even be right[,]
. . . it

is

no

more

than

a

hypothesis,

and

it

thus

is

not

knowledge, nor is it based upon sufficient facts or data or the
product of reliable principles and methods applied reliably to the
facts of the case.” (quoting Tamraz v. Lincoln Elec. Co., 620 F.3d
34

665, 670 (6th Cir. 2010)).

It is true that Dr. Horrocks did not

perform any additional testing to support his opinion regarding
the

interaction

intumescence.

between

aluminum,

(214-2 at 5-7.)

aluminum

oxide,

and

But this is not necessary in that

he claims to have the proper scientific background and accepted
Dr. Bhat’s test results for that purpose.

The question is whether

Dr. Horrocks’s testing on his allegedly inert substrate of glass
fibers as a control was conducted under the same or similar
conditions as Dr. Bhat’s aluminum testing so that the comparison
is valid and reliable.
deem

important,

This would include parameters that experts

including

most

prominently

here,

the

highly

disputed question of the amount of coating tested. In other words,
one important question is whether Dr. Horrocks’s testing on glass
fibers was of a coating layer substantially similar to that used
by

Dr.

Bhat.

Therefore,

The

because

parties
the

have

record

not

does

fully

not

addressed

establish

that

this.
Dr.

Horrocks’s testing was not conducted under substantially similar
conditions, the motion on this ground will be denied without
prejudice to its being raised at trial. 16

16

In PFG’s reply brief, PFG requested the alternative relief to “seek
leave to offer additional evidence that will demonstrate that Dr.
Horrocks’s new opinion is objectively incorrect.” (Doc. 252 at 17.) At
the hearing, PFG’s counsel stated that if Dr. Horrocks were permitted
to opine as to the result of Dr. Bhat’s aluminum testing, it should be
permitted to introduce additional testing it says Dr. Bhat has conducted
in response. Tietex’s counsel stated that no such additional testing
had been shared with it, and that no motion to further supplement Dr.

35

In summary, the court grants PFG’s motion to exclude Dr.
Horrocks’s aluminum opinions as to all of Dr. Bhat’s testing in
the first three rounds for failure to have properly disclosed it
during discovery. The court denies the motion as to Dr. Horrocks’s
opinions as to aluminum insofar as they describe criticisms of the
aluminum foil substrate used in Dr. Bhat’s supplemental testing.
To the extent PFG’s motion seeks to exclude Dr. Horrocks’s opinion
that the quantum of swelling Dr. Bhat observed in his foil-based
testing resulted from the interaction of the SV-X41 with the
aluminum foil, it is denied without prejudice to PFG demonstrating
that Dr. Horrocks’s testing was not under substantially similar
conditions to serve as a proper control.
F.

PFG Motion in Limine No. 5 (Preclude Evidence or Argument
in Contradiction of the Court’s Claim Construction
Ruling) (Doc. 220)

PFG moves to preclude Tietex from offering into evidence or
otherwise mentioning any evidence that contradicts the court’s
claim construction.

PFG contends this breaks down into three

categories of evidence: (1) Tietex’s “four-component” chemistry
construction

it

proposed

during

the

claim

construction

proceedings; (2) any attempt to add limitations to the court’s
claim

construction;

and

(3)

any

statement

that

implies

that

Bhat’s report was requested or filed. The court need not decide this
issue in light of the fact that no motion or proffer is before it to
allow such additional testing.

36

knowledge and understanding of chemistry is required to determine
whether SV-X41 swells.

(Doc. 221 at 1.)

Tietex responds that

chemistry evidence is relevant to the question of how SV-X41
functions, whether swelling occurs must be determined by the
perspective of one of ordinary skill in the art, its evidence is
admissible for impeachment purposes, and chemistry evidence is
nevertheless admissible on the issue of willfulness.

(Doc. 238 at

1-3.)
The parties each cite to extensive portions of the record and
expert opinions in support of their arguments.

Given the detailed

nature of the evidence, the court will address the areas of
evidence more generally, which should provide the parties adequate
notice of the admissible evidence consistent with the court’s
statements during the hearing.
In adopting the court’s claim construction, the court viewed
the claim terms in light of one of ordinary skill in the art.
(Doc. 57 at 4 (citing Phillips v. AWH Instruments, Inc., 415 F.3d
1303,

1312

(Fed.

Cir.

2005).)

Within

the

context

of

this

litigation, neither party disputes that one of ordinary skill in
the art may, but need not, be a chemist.
Doc. 133-4 at 13-14.)

(Doc. 145-11 at 239-41;

Now that the court has construed the claim

term “intumescent” to describe “a substance that swells and chars
upon exposure to heat or flame” (Doc. 57 at 20), Tietex may not
attempt to add further limitations to the claim.
37

Exergen Corp. v.

Wal-Mart

Stores,

Inc.,

575

F.3d

1312,

1321

(Fed.

Cir.

2009)

(stating that the parties may not seek to contradict the court’s
claim construction to a jury).

And, any expert or person of

ordinary skill in the art qualified to measure swelling by proper
scientific methods may testify.

See SEB S.A. v. Montgomery Ward

& Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (finding district
court did not abuse its discretion in admitting expert testimony
in a patent dispute involving the insulated skirt of a deep fryer,
despite the fact that the expert admitted he was "not skilled in
designing deep fryers" because the expert's testimony “established
an adequate relationship between his experience and the claimed
invention”).

Tietex may not contend that an expert is not a person

of ordinary skill in the art if he or she is not a chemist. 17
Finally, PFG seeks to preclude Tietex from offering evidence
that

the

proper

construction

of

“intumescent”

is

component claim construction that the court rejected.
256 at 10.)

its

four-

(See Doc.

But Tietex does not appear to seek to offer its

unsuccessful claim construction for this purpose. Rather, it seeks
to offer it as a possible defense to PFG’s claim of willful
infringement on the grounds that Tietex entertained an alternative
claim construction that was reasonable.

17

As discussed in connection with PFG’s motion in limine number 6, to
the extent PFG’s motion seeks to preclude Tietex’s expert from testifying
as to what “swell” means as a person of ordinary skill in the art for
purposes of literal infringement, the court will address this contention
by separate order.

38

After Halo Electronics, Inc. v. Pulse Electronics, Inc., 136
S. Ct. 1923, 1933 (2016), the willfulness inquiry is one of
subjective

reasonableness.

Subjective

willfulness

has

been

described as proof that the defendant acted despite a risk of
infringement that was known or so obvious that it should have been
known

to

the

accused

infringer.

WesternGeco

L.L.C.

v.

ION

Geophysical Corp., 837 F.3d 1358, 1362 (Fed. Cir. 2016) (citing
Halo, 136 S. Ct. at 1932), cert. granted sub nom. WesternGeco LLC
v. ION Geophysical Corp., No. 16-1011, 2018 WL 386561 (U.S. Jan.
12, 2018).
“egregious

Enhanced damages are reserved for those cases of
infringement

infringement case.

behavior”

not

found

in

the

typical

Halo, 136 S. Ct. at 1932 (“The sort of conduct

warranting enhanced damages has been variously described in our
cases

as

willful,

wanton,

consciously

wrongful,

pirate.”).

Factors

malicious,

flagrant,
relevant

bad-faith,

deliberate,

or—indeed—characteristic

to

a

willfulness

of

a

determination

include “(i) whether or not defendants intentionally copied a
product of plaintiff; (ii) whether or not defendants acted in
accordance with the standards of commerce for its industry; (iii)
whether or not defendants made a good faith effort to avoid
infringing the asserted claims; (iv) whether or not there is a
reasonable basis to believe that defendants did not infringe or
had a reasonable defense to infringement; and (v) whether or not
defendants tried to cover up any infringement.”
39

Adrea, LLC v.

Barnes & Noble, Inc., 227 F. Supp. 3d 303, 312 (S.D.N.Y. 2017)
(citing WesternGeco, 837 F.3d at 1362).
Generally, in determining whether conduct was willful, the
evidence is restricted to the defendant’s pre-litigation conduct,
but in certain cases it can be appropriate to look to the postlitigation conduct as well.

In re Seagate Tech., LLC, 497 F.3d

1360, 1374 (Fed. Cir. 2007), abrogated on other grounds by Halo
Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016); see
Synqor, Inc. v. Artesyn Techs., Inc., 709 F.3d 1365, 1374 (Fed.
Cir. 2013) (holding district court did not abuse its discretion in
finding willful infringement for post-verdict infringing sales).
Evidence that an infringing party held a good faith belief that an
infringed patent was invalid can be a defense to willfulness.

i4i

Ltd. P'ship v. Microsoft Corp., 598 F.3d 831, 858 (Fed. Cir. 2010),
aff'd, 564 U.S. 91 (2011).
Tietex argues that it should be permitted to defend against
a willfulness charge with evidence of its proposed (but rejected)
alternative claim construction for “intumescent.”

The question of

the admissibility of Tietex’s claim construction appears to be
settled by the parties.

As best the court can tell, both parties

seek to offer it as a basis to offer competing arguments on
willfulness.

In any event, Tietex’s unsuccessful construction of

the claim at issue provides some basis for it to argue it had a
subjective, good faith belief it was not infringing, and thus is
40

admissible on the issue of willfulness.

The admission will be

conditioned on a proper instruction to the jury to explain the
limited purpose of the evidence and to ensure it is not considered
by the jury to undermine the court’s claim construction.
G.

PFG Motion in Limine No. 6 (Inapplicability of the
“Person of Ordinary Skill in the Art” Standard) (Doc.
222)

PFG moves to preclude Tietex from introducing any testimony
or evidence relating to, or otherwise discussing at trial, the
“person of ordinary skill in the art” standard.

PFG contends that

now that the court has construed the only contested claim, it is
for the jury to determine whether SV-X41 is an “intumescent,” and
in doing so, the jury need not consider discussion of a person of
ordinary skill in the art.

To permit otherwise, PFG argues, would

unduly prejudice PFG by permitting Tietex to distort the court’s
claim construction, waste time, and mislead the jury.
at 1.)

(Doc. 223

Tietex responds that the court’s claim construction must

be “viewed through the eyes of one of ordinary skill in the art in
the context of PFG’s alleged invention.”

(Doc. 239 at 3 n.3.)

Otherwise, Tietex contends, absurd results obtain, leading to
conclusions

that

ordinary

substances

such

as

pancakes,

marshmallows, and other starchy materials would be identified as
“intumescents.” (Id. at 2.) Thus, it contends, “the determination
of infringement should be made in light of the purpose of PFG’s
claimed invention as would be recognized by one of ordinary skill
41

in the art which is to use ‘intumescent’ coating on a fabric that
swells to a sufficient degree to act as a thermal barrier to lessen
the effects of heat or flame on the underlying fabric.”

(Id. at

2-3.)
The determination of whether infringement occurred requires
a two-step analysis: first, the court must construe the claims to
determine their meaning and scope; second, the claims as construed
must

be

compared

to

the

allegedly

infringing

device.

Texas

Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558,
1563 (Fed. Cir. 1996) (citations omitted).

Infringement may be

literal, which requires that the accused product contain every
limitation of the asserted claim.
infringement,

a

equivalents.”
that

the

product

applies.

way,
To

Even if there is no literal

infringe

Id. at 1563-64.

“function,

equivalents

may

Id.

under

the

“doctrine

of

In this case, the parties agree

result”

test

demonstrate

for
this,

the

doctrine

there

must

of
be

particularized testimony and linking argument on a limitation by
limitation basis.

AquaTex Indus., Inc. v. Techniche Solutions,

479 F.3d 1320, 1328 (Fed. Cir. 2007) (citing Texas Instruments, 90
F.3d at 1567).
Both parties point to previous inconsistent positions taken
by the other to support their contentions.

For example, Tietex

points out that PFG’s expert himself repeatedly opined in his
reports on what a person or ordinary skill in the art would
42

conclude as to infringement. Tietex also notes that in its initial
proposed

jury

instructions,

PFG

included

language

requiring

testimony from one of ordinary skill in the art, but retracted it
more recently.

PFG responds that the expert reports were prepared

at an earlier time in the case and that it does not matter what
legal instructions it initially proposed because an incorrect
statement of the law cannot be imposed on it by estoppel.

These

competing contentions are beside the point.
As to literal infringement, the court defers consideration of
whether under the facts of this case the perspective of one of
ordinary of skill in the art may be relevant in the context of
literal infringement, which will be addressed in a separate order.
As to the doctrine of equivalents, the case law is clear that
evidence of equivalence must be from the perspective of one of
ordinary skill in the art. The Federal Circuit has expressly said:
Both the Supreme Court and this court have made clear
that the evidence of equivalents must be from the
perspective of someone skilled in the art, for example
“through testimony of experts or others versed in the
technology; by documents, including texts and treatises;
and, of course, by the disclosures of the prior art.”
But, while many different forms of evidence may be
pertinent, when the patent holder relies on the doctrine
of equivalents, as opposed to literal infringement, the
difficulties and complexities of the doctrine require
that evidence be presented to the jury or other factfinder through the particularized testimony of a person
of ordinary skill in the art, typically a qualified
expert, who (on a limitation-by-limitation basis)
describes the claim limitations and establishes that
those
skilled
in
the
art
would
recognize
the
equivalents.
43

AquaTex, 479 F.3d at 1329 (quoting Graver Tank & Mfg. Co., 339
U.S. at 609 and citing Texas Instruments, 90 F.3d at 1566); see
also Amgen, Inc. v. F. Horrmann-La Roche, Ltd., 580 F.3d 1340,
1382 (Fed. Cir. 2009); Lighting World, Inc. v. Birchwood Lighting,
Inc., 382 F.3d 1354, 1357 (Fed. Cir. 2004) (“Contrary to Lighting
World’s contention, the requirement that equivalence be evaluated
from the perspective of one of ordinary skill in the art applies
whether equivalence is measured by the ‘function-way-result’ test
or by the ‘insubstantial differences’ test.” (citing Hilton Davis
Chem. Co. v. Warner–Jenkinson Co., 62 F.3d 1512, 1518 (Fed. Cir.
1995))), rev’d on other grounds, 520 U.S. 17 (1997).
acknowledge these cases.

PFG fails to

Therefore, PFG’s motion to preclude

Tietex from providing expert testimony from one of ordinary skill
in the art on the issue of infringement via the doctrine of
equivalents will be denied. 18
H.

PFG Motion in Limine No. 7 (To Limit Evidence Related to
the Doctrine of Equivalents) (Doc. 224)

PFG moves to preclude Tietex from introducing evidence or
making arguments relating to the doctrine of equivalents in three
areas: (1) that which is inconsistent with what PFG characterizes
as the court’s previous holding as to the doctrine as applied in

18 Tietex does not contend that testimony from one of ordinary skill in
the art is necessary for any other issue. (Doc. 239 at 3 (noting that
“[w]illful infringement and damages have nothing to do with ordinary
skill”).)

44

this case; (2) that which is not based on the claims of PFG’s
patents in suit; and (3) testimony of its expert, Dr. Horrocks, on
the doctrine.

(Doc. 225 at 1-2.)

Tietex responds that (1) PFG

has mischaracterized the court’s prior proceedings; (2) PFG seeks
to ignore the court’s construction of the claim terms; and (3) Dr.
Horrocks properly disclosed opinion testimony as to the doctrine
of equivalents.

(Doc. 240 at 4-5.)

Each argument will be

addressed in turn.
“An accused device that does not literally infringe a claim
may still infringe under the doctrine of equivalents if each
limitation of the claim is met in the accused device either
literally or equivalently.”

Cybor Corp. v. FAS Techs., Inc., 138

F.3d 1448, 1459 (Fed. Cir. 1998) (en banc) (citations omitted).
“An element in the accused product is equivalent to a claim
limitation if the differences between the two are ‘insubstantial’
to one of ordinary skill in the art.”

Amgen, 580 F.3d at 1382

(citing Warner–Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S.
17, 40 (1997)).

“Insubstantiality may be determined by whether

the accused device performs substantially the same function in
substantially the same way to obtain the same result as the claim
limitation.”

Id. (citing Graver Tank, 339 U.S. at 608).

A patent holder must provide “particularized testimony and
linking argument as to the ‘insubstantiality of the differences’
between the claimed invention and the accused device or process,
45

or with respect to the function, way, result test when such
evidence is presented to support a finding of infringement under
the doctrine of equivalents.”

Texas Instruments, 90 F.3d at 1567.

“Generalized testimony as to the overall similarity between the
claims and the accused infringer's product or process will not
suffice,” id., and “evidence and argument on the doctrine of
equivalents cannot merely be subsumed in plaintiff's case of
literal infringement,” Lear Siegler, Inc. v. Sealy Mattress Co.,
873 F.2d 1422, 1425 (Fed. Cir. 1989) (citation omitted).

Under

the “all-elements rule” for assessing equivalency, “a patentee may
not assert a ‘theory of equivalen[ce] [that] would entirely vitiate
a

particular

claim

element.’”

Trading

Technologies,

International, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1355 (Fed.
Cir. 2010) (quoting Warner-Jenkinson, 520 U.S. at 38 n.8).
PFG’s

first

argument

is

that

during

the

hearing

on

the

parties’ summary judgment motions, counsel for Tietex conceded the
“function-way-result” test for the doctrine of equivalents as the
proper test for evaluating equivalency, and that counsel agreed
that only the “way” was disputed. PFG contends that this precludes
Tietex’s reliance on an “alternative test” referred to as the
“known interchangeability” test.

(Doc. 225 at 5.)

PFG relies on

the following colloquy:
THE COURT: Let me stop you just to interrupt right
there on that issue and the doctrine of equivalents. Do
you agree that the question is if you apply the function46

way-result test – first of all, is that an appropriate
test?
MR. JONES: Yes, Your Honor.
THE COURT: So, if I apply [the function-way-result
test], would you agree that the function results seem to
be the same, but the way is different?
Is that your
position?
MR. JONES:
Yes, Your Honor, they are in every
single patent case I’ve ever litigated. The function –
otherwise, we wouldn’t be here. From the function-wayresult test, no product ever gets brought in to a patent
infringement suit unless it functions in the same way or
the result is not the same; otherwise, no one is going
to sue you on it.
(Doc. 154 at 77-78 (emphasis added).)

PFG also points to the

court’s ruling on the motions, which states that the parties agreed
that the function-way-result test was the proper test and that
only the “way” was disputed.

(Doc. 152 at 40.)

Tietex properly points out, as is clear above, that its
counsel only agreed that the function-way-result test was “an”
appropriate test.

As a result of the hearing on this motion,

however, the question whether some other test might apply is
resolved.

PFG represented that it does not intend to offer proof

of known interchangeability, and Tietex conceded it does not intend
to put on evidence of a lack of known interchangeability.

Thus,

to the extent Tietex’s response rested on its statements to the
contrary, it is withdrawn.
will not be relevant.

Evidence of known interchangeability

PFG’s motion to preclude evidence of known

interchangeability will be granted by agreement of the parties.

47

As

to

PFG’s

contention

that

Tietex’s

counsel

conceded

substantial equivalency as to “function” and “result,” leaving
determination of only the “way” for trial, the record is less
clear.

As Tietex points out, its counsel clearly conceded that

the “result” was the same but denied the “way.”

In the end, the

court denied PFG’s motion for summary judgment altogether because
there was at least one disputed issue as to the doctrine of
equivalents.

Had the court meant to limit the case, however, it

would have granted PFG partial summary judgment.
so.

It did not do

Therefore, the court will not task Tietex’s counsel with a

concession as to “function” where it is not sufficiently clear.
See Fraternal Order of Police Lodge No. 89 v. Prince George's Cty.,
MD, 608 F.3d 183, 190 (4th Cir. 2010).
Next,

PFG

contends

that

Tietex

seeks

to

defend

against

equivalency by arguing that its product does not swell in a
sufficient amount or in an equivalent manner.

(Doc. 225 at 6.)

PFG seeks an order that Tietex’s arguments and evidence related to
the doctrine of equivalents be based on the actual language of the
claims of PFG’s patents.

(Id. at 8.)

According to PFG, the

question under the doctrine of equivalents is: “even if Tietex’s
SV-X41 coating does not swell, does it nevertheless perform its
function (flame retardant capabilities) in a way that is equivalent
to an intumescent.”

(Id.)

Tietex contends that “the single

liability issue in this case is whether the SV-X41 swells” and
48

that it “defies logic” to conclude that a coating that does not
swell

could

equivalents.

nevertheless

infringe

under

the

doctrine

of

(Doc. 240 at 14.)

During the hearing, Tietex’s counsel stated that it intended
to show the jury that this aspect of its product functions as a
chemical fire retardant, and that PFG’s product functions as a
“thermal barrier.”

It is not entirely clear how this differs from

the “way” Tietex’s product functions, which counsel contended was
by

acting

as

a

chemical

reaction

that

“snuffs

out”

flame.

Nevertheless, as to the issue before the court, the court concludes
that Tietex is incorrect.

Its construction of the doctrine of

equivalents – requiring that SV-X41 swell - is no different from
the question for literal infringement.

If that were the case,

there could be no liability under the doctrine of equivalents
because it would be rendered superfluous upon a finding of no
literal infringement.

Ethicon Endo-Surgery, Inc. v. U.S. Surgical

Corp., 149 F.3d 1309, 1317 (Fed. Cir. 1998) (rejecting argument
that

the

“All

Elements”

rule

can

“swallow

the

doctrine

of

equivalents, reducing the application of the doctrine to “nothing
more than a repeated analysis of literal infringement”).
It is true, as Tietex argues, that the doctrine does not apply
to the invention as a whole but to the individual elements.

Here,

it will require a jury to compare the claim term “intumescent” which the court has defined as a substance that chars and swells
49

upon exposure to heat or flame - to the element of SV-X41 that
allegedly forms the thermal barrier for flame retardancy.

If the

jury determines that “every limitation of the asserted claim, or
its ‘equivalent,’ is found in the accused subject matter, where an
‘equivalent’

differs

insubstantially,”
doctrine.

the

from
jury

the
may

claimed

find

limitation

infringement

Ethicon, 149 F.3d at 1315-16.

under

only
the

“Whether a component in

the accused subject matter [SV-X41] performs substantially the
same function as the claimed limitation [intumescent, by charring
and

swelling]

in

substantially

the

same

way

to

achieve

substantially the same result [flame retardancy] may be relevant
to this determination.”

Id.

Thus, PFG’s motion is granted to

this extent.
Finally, PFG contends that Dr. Horrocks should be precluded
from offering any opinion related to the doctrine of equivalents
because he has failed to disclose one to date.

PFG notes that no

portion of Dr. Horrocks’s expert reports is labeled as such.
Tietex points to the substance of the expert’s opinions as to how
he believes an intumescent performs and, in contrast, how the
accused product performs differently.

(Docs. 240-5, 240-6.)

The court concludes that the substance of Dr. Horrocks’s
opinions, which he offers as one of ordinary skill in the art, are
sufficient notice to PFG that they serve as a defense against
alternate

liability

under

the

doctrine
50

of

equivalents.

For

example, in his first report, Dr. Horrocks provided an opinion
regarding how the coating performs as a flame retardant based on
his analysis of the chemical components.

(Doc. 132-2 at 17-23;

id. at 23 (“In conclusion, it is my considered opinion that the
SV-X41 coating formulation, when either applied to an inert surface
alone or to a fabric, may promote char formation from the resin
component and, in the context of application to a fabric, from
some underlying fibres in the coated fabric (e.g., viscose rayon),
but any such char would not be inflated or swollen.”).)

In his

November 2015 deposition, he attempted to distinguish Tietex’s
product on the basis that the underlying fabric may have “thermal
characteristics”

and

composition of SV-X41.

because
(Doc.

of

the

underlying

145-11 at 213.)

chemical

With regard to the

coating, he noted that SV-X41 contains “a high percentage of
aluminum trihydrate which gives off lots of moisture which has an
insulating effect, a flame-diluting effect, and it also has a
potential ceramic barrier effect.”

(Id.)

He further opines that

the use of aluminum trihydrate was “not in many standard [sic]
what you might call intumescent formulations.”

(Id.)

Finally, he

further explained his theory regarding how SV-X41 performs at
“thermally

thin”

applications.

(Id.

at

215-20).

While

acknowledging the scope of the court’s claim construction, he
claimed that the chemical composition of the coating prevents it
from swelling at thin applications because it lacks a “carbonific
51

source.”

(Id. at 219-20 (“The Tietex coating, whatever it is, is

not designed to [swell], because there is no carbonific source.
If it has every component of an intumescent except the carbonific
source.”)). 19
For these reasons, PFG’s motion in limine to exclude Dr.
Horrocks from testifying as to infringement under the doctrine of
equivalents on the basis that he failed to disclose such opinions
is denied.
I.

CONCLUSION
For the reasons stated above,
IT IS THEREFORE ORDERED that the parties’ motions in limine

are granted in part and denied in part, as set forth above.

Any

motion not specifically resolved, in whole or in part, in this
opinion or during the hearing will be addressed shortly in a
separate

order.

The

parties

are

directed

to

instruct

their

witnesses in conformance with this court’s order.

/s/
Thomas D. Schroeder
United States District Judge
February 25, 2018

19

Because PFG’s motion seeks to preclude only the testimony of Dr.
Horrocks, the court does not address the evidence from any other witness
or source.

52