UNITED STATES INTERNATIONAL TRADE COMMISSION
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`Washington, D.C.
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`In the Matter of
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`CERTAIN HIGH-PERFORMANCE
`GRAVITY-FED WATER FILTERS
`AND PRODUCTS CONTAINING THE
`SAME
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`Inv. No. 337-TA-1294
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`ORDER NO. 35:
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`DENYING WITHOUT PREJUDICE COMPLAINANT’S
`MOTIONS IN LIMINE [MOTION DOCKET NOS. 1294-025
`AND 1294-027]
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`I.
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`INTRODUCTION
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`(August 5, 2022)
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`On July 22, 2022, Complainant Brita LP (“Brita”) filed two (2) motions in limine
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`(“MILs”). (Motion Docket No. 1294-025 (“MIL No. 1”); Motion Docket No. 1294-027 (“MIL
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`No. 2”).). Brita also filed a memorandum in support of each of the MILs (“Mem. No. 1;” “Mem.
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`No. 2”).
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`In its MIL No. 1, Brita seeks to preclude Respondents Qingdao Ecopure Filter Co., Ltd.
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`and EcoLife Technologies, Inc. (“Aqua Crest Respondents”); Kaz USA, Inc. and Helen of Troy
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`Limited (“PUR Respondents”); Zero Technologies, LLC and Culligan International Co.
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`(“ZeroWater Respondents”); and Vestergaard Frandsen Inc. d/b/a LifeStraw (“LifeStraw”)
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`(collectively, “Respondents,” and with Brita, the “Parties”)1 from introducing during the
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`1 Brita includes “AquaCrest Group” as a respondent in its MIL No. 1. However, “AquaCrest Group” is
`not a named respondent in this Investigation. See Fed. Reg. 87 at 4913 (Jan. 31, 2022). This appears to
`be an inadvertent error.
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`evidentiary hearing (“Hearing”) the invalidity opinions of their expert, Mr. Robert Herman, that
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`are premised on a rejected claim construction. (MIL No. 1 at 1.). Specifically, Brita requests
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`that paragraphs 121 through 268 of Mr. Herman’s original (“Herman Report”) and corrected
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`expert reports (id. at Ex. 1 (“Corrected Herman Report”))2 be stricken and Respondents be
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`precluded from eliciting testimony concerning these opinions. (MIL No. 1 at 1; Mem. No. 1 at
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`1.).
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`In its MIL No. 2, Brita seeks to preclude Respondents from introducing during the
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`Hearing the opinions and testimony of their expert, Dr. Gary Hatch that are contained in his
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`expert reports served on May 24, 2022 (“Hatch Opening Report”) and June 20, 2022 (“Hatch
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`Rebuttal Report”). (MIL No. 2 at 1.).
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`On July 29, 2022, Respondents filed an opposition to Brita’s MIL No. 1 (“Opp’n MIL
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`No. 1”) and an opposition to Brita’s MIL No. 2 (“Opp’n MIL No. 2”). (Doc. ID Nos. 776588,
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`776586.).
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`For the reasons discussed below, Brita’s MILs are denied.
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`II.
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`DISCUSSION
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`1.
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`Brita’s MIL No. 1: Denied Without Prejudice
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`Brita accurately represents that during the Markman proceedings, its proposed
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`construction for the term “average filtration unit time over lifetime L” was adopted, and that
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`Aqua Crest and PUR Respondents’ proposed construction of plain and ordinary meaning, and
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`ZeroWater Respondents and LifeStraw’s argument that the term is indefinite were rejected.
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`2 The Herman Report, which Brita refers to as “Mr. Herman’s May 24 expert report,” was not attached to
`its MIL No. 1. (Mem. at 1.). Brita only attached the Corrected Herman Report to MIL No. 1 as Exhibit
`1. (See id.). Like the Herman Report, the Corrected Herman Report is also dated May 24, 2022. (See
`MIL No. 1 at Ex. 1.).
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`(Mem. No. 1 at 1; see also Order No. 30.). Brita contends that because Respondents’ expert, Mr.
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`Herman, offered opinions concerning anticipation and obviousness “solely” premised on the
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`plain and ordinary meaning, which was rejected, Mr. Herman should be precluded from offering
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`those opinions during the Hearing because “they are necessarily wrong, unreliable, and
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`erroneous.” (Mem. No. 1 at 1.).
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`Specifically, Brita argues that Mr. Herman’s report contains certain opinions about the
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`claimed FRAP equation that he formed based on the plain and ordinary meaning of the “average
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`filtration unit time over lifetime L.” (Id. at 2.). Namely, Mr. Herman “concluded that the
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`references anticipated or rendered obvious claims 1-6, and 23 by achieving a FRAP factor of
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`about 350 or less (and less than about 200 for claim 2).” (Id. (citing Corrected Herman Rpt. at ¶¶
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`121-268).). Brita contends that “[b]ecause Mr. Herman did not offer any opinions concerning
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`how the ‘average filtration unit time over lifetime L’ limitation was met under the adopted
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`construction, he also could not offer any opinions that any of the asserted prior art had ‘a FRAP
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`factor of about 350 or less,’” and “[b]ecause every asserted claim directly or by dependency
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`includes this limitation, none of Mr. Herman’s opinions may be used to establish that the alleged
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`prior art anticipates or renders obvious any asserted claim.” (Id. at 3.).
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`Respondents assert that the “141 Patent, Brita’s experts, and Respondents’ experts, all
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`calculate average flow rate (f) the same way without delineation between Brita’s construction
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`and the plain and ordinary meaning,” that is, “by determining the average flow rate of one liter
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`over a lifetime by evaluating a number of sample points.” (Opp’n MIL No. 1 at 3.). As
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`Respondents point out, “Brita never argued in Markman process how its construction differed
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`whatsoever from the plain and ordinary meaning.” (Id.). Moreover, as Respondents note, Brita
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`appears to rely on isolated portions of the Corrected Herman Report “without mentioning the
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`hundreds of other pages of analysis that make clear the plain and ordinary meaning and Brita’s
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`construction is addressed by Mr. Herman’s report as one in the same.” (Id. at 4 (emphasis in
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`original).). Additionally, Respondents submit that they would be “tremendously prejudiced” if
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`Brita’s motion is accepted because Brita seeks to “exclude the bulk of Mr. Herman’s opinions,
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`including dispositive proof that the claimed performance of the 141 Patent was already in the
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`public domain through six different gravity fed water filters.” (Id. at 4-5.).
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`In this instance, Respondents’ arguments are persuasive. Mr. Herman’s expert reports,
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`i.e., Herman Report and Corrected Herman Report, are not stricken. He is permitted to testify
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`during the Hearing about the term “average filtration unit time over lifetime L.” Any testimony
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`elicited from Mr. Herman during the Hearing with respect to this claim term will be evaluated
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`for its weight and credibility, including his opinions contained in his expert reports concerning
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`the same. See Certain Wireless Communication Devices, Inv. No. 337-TA-1180, Order No. 34
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`at 7 (June 5, 2020) (“Certain Wireless Communication Devices”).
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`For these reasons, Brita’s MIL No. 1 is denied, but without prejudice. This Order should
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`not be construed as a decision on the merits or whether some of Mr. Herman’s opinion testimony
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`may be stricken during the Hearing as may be appropriate.
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`2.
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`Brita’s MIL No. 2: Denied Without Prejudice
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`Brita states that Respondents served two (2) expert reports prepared by Dr. Hatch that
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`purport to contain his opinions on the validity of the ’141 patent. (Mem. No. 2 at 1.). Brita
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`submits that the Hatch Opening Report includes his positions under 35 U.S.C. §§ 101, 102, 103,
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`and 112, as well as a summary of the disputed claim terms and proposed claim constructions.
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`(Id. at 2.). Brita also represents that the Hatch Rebuttal Report addresses the Parties’ claim
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`constructions and analyses relating to issues priority and validity. (Id.).
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`Brita contends that during Dr. Hatch’s deposition on July 12, 2022, “it became all too
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`clear that Dr. Hatch’s reports do not express his own opinions but rather serve as a mouthpiece
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`for Respondents’ counsels’ arguments.” (Id. at 1.). According to Brita, “Dr. Hatch repeatedly
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`did not recognize entire theories and analysis that had been asserted in his report.” (Id. at 4.).
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`In its MIL No. 2, Brita provided some of Dr. Hatch’s testimony to support its claims that
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`he did not understand what an “anticipation” analysis means.
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`Q. Okay. So are you aware of when someone says a reference anticipates, they’re
`saying all of the limitations are found in the reference?
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`A. That’s beyond my understanding. I don’t recall understanding that.
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`Q. Are you giving an opinion on anticipation?
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`A. If I have, again, this was a long – quite a while back, and I don’t recall what
`was involved in this. I’m sorry.
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`Q. You’re not able to tell me today whether you are giving an opinion as to whether
`the claims of the ’141 Patent are anticipated -- by any reference?
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`A. Again, I don’t recall my position on that.
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`(Id. at 5 (citing id., Ex. A (Hatch Dep. Tr.) at 194:19-195:15).).
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`Brita argues that the Hatch Opening Report, which Dr. Hatch signed less than two (2)
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`months prior to his deposition, states that “[i]t is [his] opinion that claims 1-6, 20-21, and 23-24
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`of the ’141 Patent are invalid as either anticipated and/or rendered obvious by the prior art cited
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`in this report.” (Id. (citing Ex. B (Hatch Opening Rpt.) at ¶ 18); see also id. at 5-6 (citing Ex. A
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`(Hatch Dep. Tr.) at 213:2-11 (re-direct), 248:1-17 (re-cross)).).
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`In addition, Brita provided testimony from Dr. Hatch’s deposition to support its claim
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`that “Dr. Hatch was completely unfamiliar with the concept of claim construction[.]” (Id. at 7
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`(citing Ex. A (Hatch Dep. Tr.) at 178:15-179:1 (“Q. You’ve provided a number of opinions in
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`this case. Would any of them change depending on the claim construction that Judge McNamara
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`issues? A. I don’t know. What -- I don’t know – I don’t know what you’re talking about.”),
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`179:6-11, 179:17-180:11).).
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`Based on the disparities between his reports and deposition testimony, Brita contends that
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`the analyses contained in the Hatch Opening and Rebuttal Reports were “not his . . . in any way.”
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`(Id. at 8 (emphasis in original).).
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`Brita also claims that during his deposition: (i) Dr. Hatch testified did not read or review
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`all the documents he relied upon in his reports (Mem. No. 2 at 9 (citing Ex. A (Hatch Dep. Tr.) at
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`79:4-10, 82:4-84:1, 166:9-22, 167:11-168:18)); (ii) although the Hatch Rebuttal Report states
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`that Dr. Hatch was aware of an inter partes proceeding (“IPR”) involving the ’141 patent and
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`disagreed with the PTAB’s finding, Dr. Hatch testified that he did not recall if he was aware of
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`the proceeding or that he read the IPR decision (id. at 10 (citing Ex. A (Hatch Dep. Tr.) at 190:9-
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`21, 191:6-15, 192:22-193:13, 249:20-250:4)); and (iii) Dr. Hatch did not recall or did not review
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`the underlaying documents cited in support of his FRAP analysis for the prior art product (id. at
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`11 (citing Ex. A (Hatch Dep. Tr.) at 124:5-16, 129:20-130:4)).). Additionally, Brita states that
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`Dr. Hatch’s deposition testimony “revealed how extensively he had relied on counsel’s
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`conclusions of fact.” (Id. at 12 (citing 17:22-18:2, 48:21-49:9, 52:9-18) (other citations
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`omitted).).
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`Brita argues that [b]ecause Dr. Hatch was not able to speak in detail at his deposition of
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`his own independent invalidity assessment, Brita did not get a full and fair opportunity to
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`investigate his theories before trial[,]” and will thus be prejudiced if Dr. Hatch is allowed to
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`testify during the Hearing. (Id. at 15-16.).
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`Respondents assert that “Brita’s motion cherry-picks excerpts of Dr. Hatch’s deposition,
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`misrepresents Dr. Hatch’s preparation, and dramatically understates Dr. Hatch’s knowledge of
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`the case.” (Opp’n MIL No. 2 at 1.).
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`With respect to Dr. Hatch’s anticipation opinion, Respondents states that Brita
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`“mischaracterizes the totality of Dr. Hatch’s testimony regarding his understanding of
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`anticipation” and provide the following testimony in support. (Id. at 3.).
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`Q. In forming the opinions that are expressed in your reports regarding anticipation
`did you apply the principle that are set forth in paragraph 28?
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`A. As I understand it here, yes, I did apply that.
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`* * *
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`(Ex. A (Hatch Dep. Tr.) at 252:4-10; see also Ex. B (Hatch Opening Rpt.) at ¶ 28 (“I have been
`informed by counsel and understand that a patent is invalid on the basis of anticipation (under 35
`U.S.C. § 102) if a single prior art reference discloses, either expressly or inherently, each and
`every limitation of the claimed invention. I further understand that a single prior art reference
`may anticipate without expressly disclosing a feature of the claimed invention if such feature is
`necessarily present, or inherent, in that reference to a person of ordinary skill in the art.”).).
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`Respondents also state that Brita “mischaracterizes the totality of Dr. Hatch’s testimony
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`regarding the claim constructions he applied in forming his opinions” and point to the following
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`testimony in support. (Opp’n MIL No. 2 at 4.).
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`Q. Can you go to page 20 of your report, please. Do you recall earlier today being
`asked some questions regarding what claim constructions you applied?
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`A. Yes.
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`Q. And do you recall at times you might not have recalled exactly what claim
`constructions you had applied for your analysis?
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`A. Yes, I did mention that.
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`Q. Can you take a look at paragraph 78.
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`A. Yes, I see it.
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`Q. Does that paragraph refresh your memory in terms of certain claim
`constructions you applied in performing your analysis?
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`A. Yes, it does.
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`Q. How so?
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`A. Well, it states that I’ve provided my opinions below in accordance with those
`agreed meanings.
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`(Ex. A (Hatch Dep.) at 213:12-214:8.).
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`With regard to the documents cited in his expert reports that Brita alleges Dr. Hatch did
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`not review, Respondents provide the following explanation and evidence:
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`Dr. Hatch reviewed mountains of information in forming his opinions. (Ex. G (Dr.
`Hatch’s Materials Considered). While there were times that Dr. Hatch may have
`not initially remembered a specific document, his redirect examination refreshed
`his memory. For example, Brita alleges that Dr. Hatch did not read the IPR
`decision. (Motion at 9-10). But Brita ignores that on redirect, Dr. Hatch testified
`he had had reviewed the decision. (Ex. A (Hatch Dep.) at 216:5-218:10). As
`another example, Brita alleges that Dr. Hatch did not review documents or perform
`calculations related to the ZeroWater prior art. (Motion at 9, 11). Brita again omits
`that the ZeroWater prior art was explained later in the deposition. (See e.g., Ex. A
`(Hatch Dep.) at 232:8-234:8 (stating Dr. Hatch had conversations with ZeroWater’s
`CEO Doug Kellam and he relied on information from Mr. Kellam in forming his
`opinions), 235:8- 238:2 (explaining ZeroWater documentation marked as Hatch
`Ex. 7 (attached as Ex. E)), 239:17-18 (explaining ZeroWater documentation
`marked as Hatch Ex. 8 (attached as Ex. F)), 240:19-242:9 (explaining ZeroWater
`documentation marked as Hatch Ex. 6 (attached as Ex. D) and related flow rates),
`242:14-243:2 (explaining FRAP calculations for the ZeroWater prior art and
`application of Brita’s construction of lifetime).
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`(Opp’n MIL No. 2 at 5-6.).
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`In response to Brita’s allegation that “Dr. Hatch did not conduct any of his own testing”
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`(Mem. MIL No. 2 at 12), Respondents submit that “Dr. Hatch never provided any opinions that
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`he did testing in the first place” (Id. at 6).3 Respondents explain that:
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`[T]esting is not required for Dr. Hatch’s opinions related to lack of written
`description, lack of enablement, lack of patentable subject matter, secondary
`considerations of non-obviousness, or why the Rawson References (which are two
`published applications) render the asserted claims obvious. Even for the ZeroWater
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`3 Respondents state that they “have a different expert, Robert Herman, who tested and analyzed the prior
`art filters. Dr. Hatch’s opinions are independent of Mr. Herman’s testing and Dr. Hatch is not relying on
`any testing.” (Opp’n MIL No. 2 at 6 n.2.).
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`prior art, Dr. Hatch relied on testing that was performed in the past, for example,
`testing by NSF in 2007 under the NSF 53 2007 lead reduction standard. (Ex. B
`(Hatch Opening Rpt). at ¶ 214 (citing Ex. H (RX-0760C at ZTI00003021)).
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`(Id.).
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`With respect to Brita’s claim that “[w]hen assessing the composition of each prior art
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`product and how it would meet the claims, Dr. Hatch testified to relying on statements from
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`counsel rather than his own independent assessment” (Mem. MIL No. 2 at 12), Respondents
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`assert that Dr. Hatch did not offer any opinions regarding these filters (i.e., “the Brita prior art
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`filter, the Dupont prior art, the PUR 1-stage system, and the PUR 2-stage system”) (Opp’n MIL
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`No. 2 at 6-7 (citing Mem. MIL No. 2 at 12-14)).
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`In response to Brita’s criticism that Dr. Hatch’s lack of knowledge of “various inputs to
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`the FRAP calculation,” Respondents argue that he explained his opinions later in the deposition.
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`(Opp’n MIL No. 2 at 7 (citing Ex. A (Hatch Dep.) at 240:19-242:9 (explaining ZeroWater
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`documentation marked as Hatch Ex. 6 (attached as Ex. D) and related flow rates), 242:14-243:2
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`(explaining FRAP calculations for the ZeroWater prior art and application of Brita’s construction
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`of lifetime).).
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`As all Parties acknowledge, the standard set forth in Daubert v. Merrell Dow
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`Pharmaceuticals, Inc., 509 U.S. 579, 590-91 (1993), is not applied in administrative proceedings
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`in the same way that it is in district courts. (Mem. MIL No. 2 at 3; Opp’n MIL No. 2 at 9.).
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`To the extent that Brita has questions about Dr. Hatch’s approach or whether his expert
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`reports accurately reflect his opinions, or whether he even understands the scope of the issues
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`based on his own knowledge and recollection and without coaching by counsel, the proper
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`course of action is for Brita to question Dr. Hatch during the Hearing, and not to preclude the
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`entirety of his testimony. See Certain Wireless Communication Devices, Order No. 34 at 7 (“the
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`better alternative at this point is to permit [Dr. Hatch] to testify during the Hearing”).
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`Brita does not appear to have misrepresented Dr. Hatch’s testimony although Brita
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`selectively presented Dr. Hatch’s testimony. However, Brita’s claim of prejudice is not
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`persuasive. During the Hearing, if Brita has reason to believe that Dr. Hatch’s testimony extends
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`beyond his expert reports or deposition testimony, Brita may object to such testimony. In
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`contrast, Respondents will be significantly prejudiced if Dr. Hatch is precluded from testifying
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`entirely. As Respondents point out, Brita has not identified any issues with respect to Dr.
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`Hatch’s opinions regarding: (i) “obviousness based on the Rawson References”; (ii) “lack of
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`written description or enablement”; (iii) “invalidity for lack of patentable subject matter”; and
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`(iv) “the correct priority date for the asserted claims of the ’141 Patent.” (Opp’n MIL No. 2 at
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`9.). Even assuming, arguendo, that the examples of Dr. Hatch’s deposition testimony Brita’s
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`MIL No. 2 discuss are accurate, Brita’s requested relief of precluding him from testifying during
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`the Hearing is, as Respondents note, a “gross overreach.” (Opp’n No. 2 at 2.).
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`Dr. Hatch is permitted to testify during the Hearing about the opinions discussed in his
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`expert reports, i.e., Hatch Opening Report and Hatch Rebuttal Report. Any testimony elicited
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`from Dr. Hatch during the Hearing will be evaluated for its weight and credibility. See Certain
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`Wireless Communication Devices, Order No. 34 at 7.
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`For the foregoing reasons, Brita’s MIL No. 2 is denied, but without prejudice. This
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`Order should not be construed as a decision on the merits or whether some of Dr. Hatch’s
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`opinion testimony may be stricken during the Hearing as may be appropriate.
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`III. CONCLUSION
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`For the foregoing reasons, Brita’s MILs are hereby denied without prejudice. This Order
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`should not be construed as a decision on the merits of the MILs at issue.
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`Within seven (7) business days of the date of this document, each party shall submit to
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`the Office of the Administrative Law Judges through McNamara337@usitc.gov a statement
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`whether or not it seeks to have any confidential portion of this document redacted from the
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`public version. That is the courtesy copy pursuant to Ground Rule 1.3.2. Any party seeking
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`redactions to the public version must submit to this office through McNamara337@usitc.gov a
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`copy of a proposed public version of this document pursuant to Ground Rule 1.10 with yellow
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`highlighting clearly indicating any portion asserted to contain confidential business information.
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`The Parties’ submissions concerning the public version of this document need not be
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`filed with the Commission Secretary.
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`SO ORDERED.
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