Mobile Medical International Corporation v. Advanced Mobile Hospital Systems, Inc. et al

Filing 183

OPINION AND ORDER denying 138 Motion to Disqualify Anthony Brummel from Presenting Expert Testimony on Invalidity; denying 140 Motion to Preclude Plaintiff from Relying on Prior Art, Contentions and Combinations Disclosed for the First Time on April 3, 2014; denying 144 Motion to Disqualify Dr. Paul K. Carlton From Presenting Expert Testimony. Signed by Judge William K. Sessions III on 2/24/2015. (law)

UNITED STATES DISTRICT COURT
FOR THE
DISTRICT OF VERMONT
MOBILE MEDICAL INTERNATIONAL
CORPORATION,
Plaintiff,
v.
ADVANCED MOBILE HOSPITAL
SYSTEMS, INC., TRACTUS
MEDICAL, INC., and JOHN
DOES 1-10,
Defendants.

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Case No. 2:07-cv-231

OPINION AND ORDER
Plaintiff Mobile Medical International Corporation (“MMIC”)
seeks a declaratory judgment with respect to the validity and
non-infringement of U.S. Patent No. 4,915,435 (the “‘435
Patent”).

Defendants Advanced Mobile Hospital Systems, Inc.

(“AMoHS”) and Tractus Medical, Inc. (“Tractus”) have
counterclaimed for patent infringement.

Tractus is a subsidiary

of AMoHS and owner of the ‘435 Patent.

Now before the Court are

motions to disqualify two MMIC expert witnesses (ECF Nos. 138,
144) and a motion to preclude MMIC from relying upon certain
evidence (ECF No. 140).

For the reasons set forth below, those

motions are denied.
Factual Background
The ‘435 Patent describes a transportable van in which
invasive surgical procedures can be performed.

It includes a

laterally expandable portion that defines the operating room,

with an operating table that need not be removed when the
expandable portion is retracted.

The unit includes all essential

facilities for complete invasive surgical procedures, including
pre- and post-op areas.
MMIC is a manufacturer of temporary surgical units, known as
“mobile medical units,” that can be installed into truck bodies.
MMIC also manufactures temporary surgical units that can be
delivered to an emergency location or otherwise built to provide
a medical operating room.

MMIC was formerly a licensee of the

‘435 Patent.
MMIC filed this lawsuit on October 30, 2007, and AmoHS and
Tractus responded with an answer and counterclaim.

On February

25, 2008 and March 29, 2009, MMIC filed requests for
reexamination of the ‘435 patent with the United States Patent
and Trademark Office (“USPTO”).

The instant litigation was

stayed on August 27, 2008 pending the outcome of the
reexaminations.

During the first reexamination, the USPTO

rejected claims 19-25 and 31-35 of the ‘435 Patent as
unpatentable, and the patentee canceled the claims.

During the

second reexaxmination, the PTO examiner rejected the remaining
claims.

The decision was reversed by the Board of Patent Appeals

and Interferences, which found claims 1-18 and 30 valid in view
of the prior art asserted.
This litigation recommenced in 2012.

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The parties engaged in

discovery, experts were disclosed, and several motions are now
pending before the Court.
Pending Motions
I.

Defendants’ Motion to Disqualify Anthony Brummel
The Court first addresses the motion of AMoHS and Tractus

(collectively “AMoHS”) to disqualify MMIC expert Anthony Brummel
from presenting his opinions about the validity of the ‘435
Patent.

Under Federal Rule of Evidence 702:

A witness who is qualified as an expert by knowledge,
skill, experience, training, or education may testify
in the form of an opinion or otherwise if:
(a) the expert’s scientific, technical, or other
specialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in
issue;
(b) the testimony is based on sufficient facts or data;
the testimony is the product of reliable principles and
methods; and
(c) the expert has reliably applied the principles and
methods to the facts of the case.
Fed. R. Evid. 702.
A district court must undertake a “gatekeeping” role with
respect to expert opinion testimony.

Daubert v. Merrell Dow

Pharmaceuticals, Inc., 509 U.S. 579 (1993).

In Daubert, the

Supreme Court set forth a series of factors for determining
whether expert testimony rests upon a sufficiently reliable
foundation:

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(1) whether a theory or technique “can be (and has
been) tested”; (2) “whether the theory or technique has
been subjected to peer review and publication”; (3) a
technique’s “known or potential rate of error,” and the
“existence and maintenance of standards controlling the
technique’s operation”; and (4) whether a particular
technique or theory has gained “general acceptance” in
the relevant scientific community.
Amorgianos v. Nat’l R.R. Passenger Corp., 303 F.3d 256, 265 (2d
Cir. 2002) (quoting Daubert, 509 U.S. at 593–94).

The Supreme

Court has made clear that the Daubert guidelines must be applied
with flexibility, particularly when the expert is offering
opinions based on specialized personal knowledge rather than
scientific studies.
137, 150 (1999).

See Kumho Tire Co. v. Carmichael, 526 U.S.

“It is well-established that the trial judge

has broad discretion in the matter of the admission or exclusion
of expert evidence[.]”

Boucher v. United States Suzuki Motor

Corp., 73 F.3d 18, 21 (2d Cir. 1996) (citation and quotation
marks omitted).
“[T]he proponent of expert testimony has the burden of
establishing by a preponderance of the evidence that the
admissibility requirements of Rule 702 are satisfied[.]”
States v. Williams, 506 F.3d 151, 160 (2d Cir. 2007).

United

In patent

cases, a witness who is not qualified as a person of ordinary
skill in the pertinent art may not testify as an expert on
obviousness.

Sundance, Inc. v. DeMonte Fabricating Ltd., 550

F.3d 1356, 1364 (Fed. Cir. 2008).
In this case, MMIC has designated Anthony Brummel as one of
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its expert witnesses.

Mr. Brummel is an engineer and consultant

in the field of specialty vehicle engineering, including medical
vehicles.

He received a B.A. in industrial technology and

education in 1983, and a Masters in industrial technology in
1989.

Between 1984 and 2011, Mr. Brummel was employed at Calumet

Coach Company, now known as Oshkosh Specialty Vehicles, and at
the time of his departure from that company was the Director of
Engineering.
During his time at Calumet Coach and successor companies,
Mr. Brummel designed and helped build expandable vehicles for a
number of purposes, including expandable surgical and other
medical trailers.

According to his report, he proposes to offer

opinions on whether vans described in the ‘435 Patent, with all
of the features of claims 1-18 and 30, were (1) known and (2)
obvious to those of ordinary skill and art prior to January 1,
1989 and April 5, 1988.
AMoHS moves to disqualify Mr. Brummel on several grounds,
arguing first that the expert report is not his own work and was
instead drafted by counsel.

Federal Rule of Civil Procedure

26(a)(2)(B) requires that the disclosure of a testifying expert
“be accompanied by a written report – prepared and signed by the
witness.”

Fed. R. Civ. P. 26(a)(2)(B).

With respect to

drafting, both sides cite Trigon Ins. Co. v. United States, 204
F.R.D. 277, 291-92, 295 (E.D. Va. 2001), which determined that:

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[u]nquestionably, Rule 26 requires an expert witness to
prepare his own Rule 26 Report. The Advisory Committee
Notes accompanying this rule clarify the intended
meaning of the phrase “prepared and signed by the
witness”, explaining that a report can be “prepared” by
an expert witness even if counsel has aided the witness
in preparing an expert’s report. . . . [T]he report,
which is intended to set forth the substance of the
direct examination, should be written in a manner that
reflects the testimony to be given by the witness and
it must be signed by the witness.
Within the Second Circuit, it has been held that “attorneys are
not precluded from assisting expert witnesses in the preparation
of their reports so long as the witness remains substantially
involved.”

Keystone Mfg. Co. v. Jaccard Corp., 394 F. Supp. 2d

543, 568 (W.D.N.Y. 2005).
Here, Mr. Brummel testified that he spent nearly 20 hours on
his invalidity analysis, including reviewing documents and
discussing issues and information with MMIC counsel.

He also

reportedly spent an entire day dictating his opinions in response
to questions from counsel.

While counsel prepared the first

draft of the report, Mr. Brummel edited for accuracy and made
necessary changes.
Given these attested facts, the Court finds that
disqualification on the asserted basis is not warranted.

Mr.

Brummel has confirmed that the opinions set forth in the report
are his own, and his testimony reveals substantial involvement in
the report’s preparation.

Furthermore, “[a]s the court noted in

Keystone, the appropriate approach, when a party is faced with

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participation of counsel in the preparation of an expert report,
is to present such facts to the finder of fact . . . .
is not the proper remedy.”

Exclusion

Lab Crafters, Inc. v. Flow Safe,

Inc., 2007 WL 7034303, at *5 (E.D.N.Y. Oct. 26, 2007) (citing
Keystone Mfg., 394 F. Supp. 2d at 568).
AMoHS next argues that Mr. Brummel’s invalidity analysis
should be barred because it does not rest on a reliable
foundation.

See Daubert, 509 U.S. at 597.

Specifically, AMoHS

contends that Mr. Brummel failed to include two of the factors
required for an invalidity analysis under Graham v. John Deere
Co., 381 U.S. 1 (1966).

The Supreme Court has held that while

“the ultimate question of patent validity is one of law,”
validity rests on factual inquiries as to (1) the scope and
content of prior art; (2) differences between that prior art and
the claimed invention; (3) the level of ordinary skill in the
pertinent art; and (4) evidence of secondary factors such as
obviousness.

Graham, 383 U.S. at 17–18; see also KSR Int’l Co.

v. Teleflex, Inc., 550 U.S. 398 (2007).

With regard to the

fourth factor, it is well established that determinations of
obviousness may not be based upon hindsight.

See Crown

Operations Int’l, Ltd. v. Solutia, Inc., 289 F.3d 1367, 1376
(Fed. Cir. 2002).
AMoHS submits that Mr. Brummel failed to properly analyze
obviousness and to account for hindsight bias.
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Mr. Brummel’s

report addresses obviousness in the context of what would have
been common sense at the time, concluding that the subject matter
of the patent was both obvious and predictable.

He notes that

the inventor of the ‘435 Patent, Dr. Levine, admitted in a
deposition that “he did not invent any new equipment, and that he
developed the lists of equipment in the patent by speaking to
people in hospitals and asking them to identify commonly used
equipment.”

Id.

Mr. Brummel opines that “[p]rior to April 1988,

those of ordinary skill in the art did the exact same thing when
constructing mobile surgical trailers and other mobile medical
trailers.”

Doc. 142-1 at 7.

Accordingly, as he explained in his

own deposition, Mr. Brummel concludes that there were no
“secondary considerations” relevant to his review.

ECF No. 142-2

at 76.
With regard to hindsight bias, Mr. Brummel appears to have
analyzed the technology available prior to 1989, the year of the
patent filing, and reviewed it in light of what would have been
obvious to a person of ordinary skill at that time.

For example,

in the “Summary of Opinions” section of his report, Mr. Rummel
states that “[p]rior to April 1988, those in the specialty
vehicle manufacturing industry knew of various types of
expandable vehicles,” as well as various “well known solutions .
. . that were considered interchangeable depending on customer
needs.”

ECF No. 142-1 at 6.

In his deposition, Mr. Brummel

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reiterated that when applying his methodology, he took into
account the available information and the level of ordinary skill
prior to 1989.

ECF No. 142-2 at 190-92.

The Court therefore

declines to disqualify him due to an alleged failure to account
for hindsight bias.
AMoHS further submits that as an engineer, Mr. Brummel lacks
the necessary experience in the “conception and invention of
mobile medical facilities” to qualify as an expert.

In assessing

the validity of a patent, the scope and content of prior art is
reviewed “from the perspective of one of ordinary skill in the
art.”

Sundance, 550 F.3d at 1361 n.3.

Mr. Brummel was involved

in the engineering of surgical and other mobile medical units in
the 1980s.

During the course of that work, he became

knowledgeable about the types of specialty vehicles being
constructed at that time, and he and/or his company consulted
with medical professionals to identify their needs.

The Court

finds this background sufficient for him to offer his opinions.
AMoHS’s motion to disqualify Mr. Brummel is denied.
II.

Defendants’ Motion to Disqualify Dr. Paul K. Carlton
AMoHS also moves to disqualify MMIC’s medical expert, Dr.

Paul Carlton.

Dr. Carlton was formerly the Surgeon General of

the United States Air Force.

He received his undergraduate

degree from the Air Force Academy and his medical degree from the
University of Colorado.

He is trained as a general surgeon, and

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has been in practice for 40 years.

As a result of his years of

medical and military experience, he is familiar with “the
requirements for conducting invasive surgery in various settings,
including hospitals, physician offices, deployed military
settings, and the international environment.”
2.

ECF No. 144-1 at

He also formerly sat on the Board of Directors for MMIC.
Dr. Carlton offers opinions with regard to the surgical

equipment required in the 1980s, as well as the ‘435 Patent’s
obviousness.

AMoHS contends that Dr. Carlton’s obviousness

analysis lacks the required methodology.

AMoHS also submits that

his testimony with regard to equipment requirements in the 1980s
will involve questions of law that are not appropriate for expert
testimony, while his testimony about surgeries outside of
licensed operating rooms will be irrelevant and confusing since
the ‘435 Patent sought to comply with requirements for surgeries
performed in licensed facilities.
Beginning with the question of obviousness, Dr. Carlton
compares the ‘435 Patent to “DEPMED” mobile medical units used by
the military since approximately 1980.

While DEPMEDs were

modular units that could be transported by truck, Dr. Carlton
concludes that “[i]t would have been obvious, more than one year
prior to Levine’s patent, to make one or more DEPMEDS unites
integral with a chassis so that it acts as a trailer.”
144-1 at 4.

ECF No.

He similarly concludes that as DEPMEDS were equipped

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with the necessary environmental controls, “[i]t would have been
obvious prior to April 5, 1989 to provide these environmental
controls and others set forth in Medicare and accreditation
guidelines existing at the time in a fixed or mobile facility.”
Id. at 4.
AMoHS argues that in reaching his conclusions about
obviousness, Dr. Carlton was required to explain his methodology
so that the Court, as a Daubert gatekeeper, can determine
reliability.

In Kumho Tire Co., the Supreme Court noted that

“there are many different kinds of experts, and many different
kinds of expertise.”

526 U.S. at 150.

In cases of expertise

based upon personal experience, courts have commented that the
Daubert factors “have little applicability . . . [since] there
really is no methodology or technique supporting it.”

Smith v.

Target Corp., 2012 WL 5876599, at *10 (N.D.N.Y. Nov. 20, 2012)
(citing Mahoney v. J.J. Weiser and Co., Inc., 2007 WL 3143710, at
*4 (S.D.N.Y. 2007)).

Nonetheless, the Court must ensure that the

expert’s opinions are based upon “sufficient facts or data,” and
that he explains “how that experience leads to the conclusion
reached, why that experience is a sufficient basis for the
opinion, and how that experience is reliably applied to the
facts,’ because ‘the trial court’s gatekeeping function requires
more than simply taking the expert’s word for it.’”

Bah v.

Nordson Corp., 2005 WL 1813023, at *9 (S.D.N.Y. 2005) (quoting
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Fed. R. Evid. 702 advisory committee’s note).
Dr. Carlton intends to testify about surgical facilities and
equipment in use in the 1980s.

While AMoHS complains about a

lack of methodology, Dr. Carlton’s testimony will be based
largely upon personal experience.

As demonstrated by his report,

he intends to explain the basis for his opinions and how his
opinions relate to the facts of this case.

The persuasiveness of

his conclusions and the weight given thereto are questions for
the trier of fact. See Figueroa v. Boston Scientific Corp., 254
F. Supp. 2d 361, 368 (S.D.N.Y. 2003) (holding that an expert may
base his opinion on experience alone, and even assuming no data
to support his opinions, those deficiencies impact the weight of
his testimony and not the admissibility).

The trier of fact may

also choose to find Dr. Carlton not credible.

His opinions,

however, are admissible to the extent they are based upon his
specialized knowledge of the relevant time period, and will he
will not be disqualified for lack of reliability.
The Court also rejects AMoHS’s contention that Dr. Carlton
may not testify about code requirements for operating rooms.

The

Court acknowledges that expert testimony expressing legal
conclusions must be excluded.
363 (2d Cir. 1992).

See Hygh v. Jacobs, 961 F.2d 359,

Dr. Carlton’s testimony, however, will

purportedly explain how building codes, Medicare standards, and
other legal requirements were being applied in the 1980s.

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Accordingly, his testimony will extend beyond the mere content of
those requirements, and will likely aid the jury in understanding
the significance of the various codes in relationship to the
issues presented in this case.
AMoHS’s final argument is that Dr. Carlton’s testimony about
equipment used in facilities outside of fixed hospitals will be
irrelevant and confusing.

This issue begins with the Court’s

claim construction opinion, which concluded in part that after
“[r]eviewing the entire patent, it is clear that the inventor
intended to claim a mobile operating room that included all of
the essential requirements for invasive surgery that a permanent
and fixed hospital facility has.”

ECF No. 112 at 6-7.

The Court

also determined that “[c]onsistent with the description in the
specification, the term [essential equipment] is construed as
‘equipment required by health, building, and other regulatory
codes for invasive surgery at the time and place of the intended
use.’”

Id. at 8.

MMIC represents that Dr. Carlton will be testifying about
the necessary equipment for invasive surgery prior to 1989, and
the types of facilities used for invasive surgery at that time.
Those areas of testimony are plainly within his expertise, and
will assist the jury in understanding the concept of essential
equipment consistent with the Court’s latter construction of the
claim.

The motion to disqualify Dr. Carlton as an expert is

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therefore denied.
III. Defendants’ Motion to Preclude Prior Art
AMoHS further moves to preclude MMIC from relying on prior
art references that were not disclosed until after April 3, 2014.
According to the discovery schedule in place at the time of the
disclosure (ECF No. 136), all discovery was to be completed by
March 31, 2014.

MMIC opposes the motion, arguing that AMoHS’s

counsel was in fact notified of those specific art references
prior to the close of discovery.
Rule 26(a)(1)(A) of the Federal Rules of Civil Procedure
requires a party to provide the opposition with “a copy — or a
description by category and location — of all documents,
electronically stored information, and tangible things that the
disclosing party has in its possession, custody, or control and
may use to support its claims or defenses, unless the use would
be solely for impeachment.”

Fed. R. Civ. P. 26(a)(1)(A)(ii).

Under Rule 37(c)(1), if a party fails to provide information
required by Rule 26(a) in a timely manner, “the party is not
allowed to use that information . . . unless the failure was
substantially justified or is harmless.”

Fed. R. Civ. P.

37(c)(1).
The Second Circuit has held that preclusion is a
discretionary remedy, even if “the trial court finds that there
is no substantial justification and the failure to disclose is

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not harmless.”

Design Strategy, Inc. v. Davis, 469 F.3d 284, 297

(2d Cir. 2006) (internal quotation marks omitted).

In deciding

whether to preclude, a court should consider: “(1) the party’s
explanation for the failure to comply with the [disclosure
requirement]; (2) the importance of the [new evidence]; (3) the
prejudice suffered by the opposing party as a result of having to
prepare to meet the new [evidence]; and (4) the possibility of a
continuance.”

Patterson v. Balsamico, 440 F.3d 104, 117 (2d Cir.

2006) (quoting Softel, Inc. v. Dragon Med. & Scientific Commc'ns,
Inc., 118 F.3d 955, 961 (2d Cir. 1997)).
MMIC submits that AMoHS cannot claim either surprise or
prejudice resulting from the April 3, 2014 disclosures, as each
piece of evidence had been either disclosed or discussed in
correspondence between the parties well prior to the actual
disclosure date.

Specifically, MMIC represents to the Court that

each of the fifteen items in question were “disclosed and
discussed in detail in the Expert Report of Anthony Brummel on
October 1, 2013, prior to the close of discovery and more than 5
months prior AMoHS’s [expert] rebuttal deadline.”
3.

ECF No. 143 at

MMIC also cites detailed email correspondence between counsel

in which the art in question is both disclosed and discussed in
the context of MMIC’s theories of liability.
While AMoHS concedes that the disclosures in question “were
produced by MMIC or others at some point in discovery,” it

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contends that the only explanation of their context came from Mr.
Brummel.

ECF No. 143 at 8.

AMoHS also argues that disclosures

by Mr. Brummel, an independent expert, “cannot speak for MMIC or
be considered its employee or agent or corporate spokesperson
unless and until MMIC adopts his opinions as its own – which did
not occur until April 3, 2014.”

ECF No. 143 at 8.

Given AMoHS’s concessions, the Court is hard pressed to
identify prejudice as result of MMIC’s late disclosure.

Also

weighing in MMIC’s favor is the importance of this evidence.

The

prior art listed in the motion to preclude includes diagrams of
pre-existing medical units that, MMIC contends, counter AMoHS’s
claim to a valid patent.

For example, MMIC disclosed a 1982

European patent showing a trailer that could reportedly be used
as a mobile hospital or operating unit.

MMIC also offers “Stone

and Gasko” articles describing mobile medical and surgical units.
While these and the other thirteen items at issue may not be
MMIC’s only prior art evidence, they appear to be highly relevant
to its claims.

See Softel, Inc., 118 F.3d at 961.

Finally, the Court may consider the possibility of a
continuance.

According to the latest discovery schedule (ECF No.

160), Defendants’ opposition to MMIC’s Motion for Summary
Judgment of Invalidity is now due within 30 days of this Opinion
and Order, and a final pre-trial schedule is not yet due.

If

MMIC’s disclosure of the prior art in question did not allow

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AMoHS ample opportunity to question experts or otherwise prepare
its case, the Court will entertain a short continuance provided
that AMoHS offers ample support for such a delay.

The Court will

now, however, preclude MMIC from relying upon that prior art on
the basis of a late disclosure, and AMoHS’s motion to preclude is
denied.

Any request for a continuance shall be filed within

seven days of this Opinion and Order.
Conclusion
For the reasons set forth above, AMoHS’s motions to
disqualify Anthony Brummel (ECF No. 138), to disqualify Dr. Paul
Carlton (ECF No. 144), and to preclude reliance upon prior art
(ECF No. 140) are denied.

Dated at Burlington, in the District of Vermont, this 24th
day of February, 2015.

/s/ William K. Sessions III
William K. Sessions III
District Court Judge

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