Case 1:14-cv-00366-JDL Document 291 Filed 08/31/17 Page 1 of 10 PageID #: 11796
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MAINE
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`MARICAL, INC., et al.,
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`Plaintiffs
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`v.
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`COOKE AQUACULTURE INC., et al., )
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`Defendants
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`1:14-cv-00366-JDL
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`MEMORANDUM OF DECISION ON MOTIONS TO STRIKE
`EXPERT REPORTS
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`In this action, Plaintiffs and Counter-claim Defendants Marical Inc., Europharma
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`AS, and Europharma Inc. Canada (“Plaintiffs”), allege that Defendants and Counter-claim
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`Plaintiffs Cooke Aquaculture Inc., Cooke Aquaculture USA Inc., True North Salmon Co.
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`Ltd., True North Salmon US Inc., True North Sales US Inc., and Salmones Cupquelan SA
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`(“Defendants”), produce and import salmon raised by methods that infringe Plaintiffs’
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`United States patents, which patents teach methods for raising pre-adult anadromous fish.
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`(Complaint, ECF No. 1.) In their counterclaim for declaratory judgment, Defendants seek
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`a judgment of invalidity and non-infringement. (Answer and Counterclaims, ECF No. 16.)
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`The matter is before the Court on the following discovery motions,1 all of which
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`seek to limit or preclude expert testimony based on the substance of the expert witness
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`disclosures and/or timeliness considerations:
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`1 By local rule, discovery motions require prior approval from the Court. D. Me. Loc. R. 26(b). The Court
`authorized the pending motions by order dated June 20, 2017. (ECF No. 250.)
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`Case 1:14-cv-00366-JDL Document 291 Filed 08/31/17 Page 2 of 10 PageID #: 11797
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`Defendants’ Motion to Strike New Contentions in [Steven H. Jury, Ph.D.’s]
`Reports (ECF No. 259);
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`Plaintiffs’ Motion to Strike Portions of the Reports of Terrence M. Bradley,
`Ph.D. (ECF No. 263);
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`Plaintiffs’ Motion to Strike the Expert Report of the Honorable Gerald J.
`Mossinghoff (ECF No. 264).
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`Following a review of the record, and after consideration of the parties’ arguments,
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`the Court denies the motions.
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`DISCUSSION
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`Federal Rule of Civil Procedure 26 governs the duty to disclose information in
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`discovery. As to expert witnesses, Rule 26 requires that a party disclose expert witnesses
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`who may be used at trial to present evidence under Federal Rule of Evidence 702, 703, or
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`705. Expert disclosures ordinarily include the production of a written report prepared and
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`signed by the expert witness. Fed. R. Civ. P. 26(a)(2). In this District, the deadline for
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`expert designations in most cases, including patent cases, is established by a scheduling
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`order. D. Me. Loc. R. 16.2(c).2
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`Under the governing procedural rules, parties have a duty to supplement information
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`given by expert witnesses in their reports and at their depositions. Specifically, a party
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`must supplement the expert witness disclosures at least 30 days prior to trial. Fed. R. Civ.
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`P. 26(e)(2), (a)(3). Compliance with the deadline, however, is not the sole consideration
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`2 The applicable scheduling order established the following relevant deadlines for expert witness
`designations: Deadline to Serve Opening Expert Reports by the Party Bearing the Burden of Proof: April
`14, 2017; Deadline to Serve Rebuttal Expert Reports: May 29, 2017. (ECF No. 208.)
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`2
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`Case 1:14-cv-00366-JDL Document 291 Filed 08/31/17 Page 3 of 10 PageID #: 11798
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`when determining whether to permit a party’s supplemental designation. Ordinarily, a
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`party cannot fundamentally change the substance of an expert witness’s anticipated
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`testimony through a supplemental designation. SD3, LLC v. Rea, 71 F. Supp. 3d 189, 194–
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`95 (D.D.C. 2014); Tripkovich v. Ramirez, No. 2:13-CV-6389, 2015 WL 3849392, at *5
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`(E.D. La. June 22, 2015); State Farm Mut. Auto. Ins. Co. v. Physicians Injury Care Ctr.,
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`Inc., No. 6:06-CV-1757, 2008 WL 11342764, at *2 (M.D. Fla. Aug. 26, 2008).
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`Both parties contend that certain expert opinions should be stricken because the
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`opinions were not adequately disclosed in, or are inconsistent with, prior responses to
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`contention interrogatories posed to the party. The parties further argue that because fact
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`discovery has closed, they are prejudiced by the newly disclosed opinions because the
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`underlying facts upon which the opinions depend can no longer be “discovered.”
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`Interrogatories that seek the bases of a party’s claims or defenses are within the
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`scope of permissible discovery. Pursuant to Rule 33,
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`[a]n interrogatory is not objectionable merely because it asks for an opinion
`or contention that relates to fact or the application of law to fact, but the court
`may order that the interrogatory need not be answered until designated
`discovery is complete, or until a pretrial conference or some other time.
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`Fed. R. Civ. P. 33(a)(2). Rule 26 provides that answers to interrogatories may be
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`supplemented or corrected “in a timely manner if the party learns that in some material
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`respect the disclosure or response is incomplete or incorrect, and if the additional or
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`corrective information has not otherwise been made known to the other parties during the
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`discovery process or in writing ….” Fed. R. Civ. P. 26(e)(1).
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`3
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`Case 1:14-cv-00366-JDL Document 291 Filed 08/31/17 Page 4 of 10 PageID #: 11799
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`Based on these provisions, the Court is not persuaded by the parties’ basic assertion
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`that because an expert opinion is “new” when compared to a party’s prior responses to
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`contention interrogatories, the opinion is inherently subject to exclusion. While Rule 37(c)
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`authorizes the Court to sanction the failure to disclose or the failure to supplement an earlier
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`disclosure or response, the Rules also permit a party to supplement and correct its
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`contentions. See, e.g., Genband US LLC v. Metaswitch Networks Corp., No. 2:14-CV-33,
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`2016 WL 122969, at *1 (E.D. Tex. Jan. 9, 2016).
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`Defendants’ Motion to Strike New Contentions in [Steven H. Jury, Ph.D.’s]
`Reports (ECF No. 259)
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`A.
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`Defendants object to the following “new contentions” expressed in Dr. Steven
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`Jury’s reports:3
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`1. That the use of seawater as the only source of magnesium and calcium is
`not a method taught in the patents;
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`2. That the addition of tryptophan or other amino acids to feed requires the
`addition of “free” rather than “bound” amino acids;
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`3. That the percentage by weight of sodium chloride in feed can be calculated
`based on information on the feed label or “tag”; and
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`4. That there are secondary considerations of non-obviousness.4
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`3 Expert Report of Steven H. Jury, Ph.D., Regarding Defendants’ Infringement (ECF No. 256-3); Rebuttal
`Expert Report of Steven H. Jury, Ph.D., in Response to Defendants’ Expert Report of Terrence M. Bradley,
`Ph.D. (ECF No. 256-4).
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` 4
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` A central issue in this case is whether the methods taught in the patents-in-suit were obvious. Secondary
`considerations are a factor in the obviousness inquiry.
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`Under § 103, the scope and content of the prior art are to be determined; differences
`between the prior art and the claims at issue are to be ascertained; and the level of ordinary
`skill in the pertinent art resolved. Against this background, the obviousness or
`nonobviousness of the subject matter is determined. Such secondary considerations as
`commercial success, long felt but unsolved needs, failure of others, etc., might be utilized
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`4
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`Case 1:14-cv-00366-JDL Document 291 Filed 08/31/17 Page 5 of 10 PageID #: 11800
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`The Court is not convinced that the opinions fundamentally change the expert’s
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`opinion or constitute an improper supplementation of Plaintiffs’ responses to Defendants’
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`contention interrogatories. Instead, the opinions represent or constitute the continued
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`development and modification of the expert’s assessment and Plaintiffs’ contentions, and
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`the disclosures do not involve unfair surprise or result in unfair prejudice. As in most cases,
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`the parties’ theories and arguments evolve with the information generated in discovery.
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`Defendants will have an opportunity to address the opinions in their reply expert report.5
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`Plaintiffs’ Motion to Strike Portions of the Reports of Terrence M. Bradley,
`Ph.D. (ECF No. 263)
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`B.
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`Plaintiffs object to the following “new contentions” expressed in Dr. Terrence
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`Bradley’s reports:6
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`1. That Defendants have not infringed the patents-in-suit because freshwater
`used in their processes may not have initial concentrations of calcium,
`magnesium and sodium of less than 2 mM;
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`2. That Defendants have not infringed because the salmon are changed by
`subsequent processes7;
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`to give light to the circumstances surrounding the origin of the subject matter sought to be
`patented.
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`Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1047 – 48 (Fed. Cir. 2016) (quoting Graham v. John
`Deere Co., 383 U.S. 1, 17 – 18 (1966), and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)).
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` 5
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` This determination is without prejudice to Defendants’ ability to assert that decisions made in the context
`of claim construction may preclude reliance on an opinion that conflicts with the Court’s construction of
`the representative claims. For present purposes, the Court simply concludes that such arguments do not
`provide a persuasive basis to exclude the opinions based on an alleged discovery violation.
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` 6
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` Expert Report of Terrence M. Bradley, Ph.D. (ECF No. 258-9); Expert Rebuttal Report of Terrence M.
`Bradley, Ph.D. (ECF No. 258-10).
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` 7
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` See 35 U.S.C. § 271(g) (concerning importation into the United States of products that infringe a U.S.
`patent: “A product which is made by a patented process will, for purposes of this title, not be considered to
`be so made after … it is materially changed by subsequent processes ….”).
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`5
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`Case 1:14-cv-00366-JDL Document 291 Filed 08/31/17 Page 6 of 10 PageID #: 11801
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`3. That Defendants have not infringed because Plaintiffs did not notify feed
`manufacturers to stop selling feed containing 0.39% or more sodium and
`Defendants stopped buying Plaintiffs’ SuperSmolt feed;
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`4. That Defendants have not infringed because Chilean coastal fjord waters
`do not meet the definition of seawater;
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`5. That the patents-in-suit are invalid based in part on eight prior art
`references first disclosed in Dr. Bradley’s report; and
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`6. That the patents-in-suit are invalid because the SuperSmolt process taught
`in the patents does not work.
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`The Court is not convinced that the opinions fundamentally change the expert’s
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`opinion or constitute an improper supplementation of Defendants’ responses to Plaintiffs’
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`contention interrogatories. Instead, the opinions represent or constitute the continued
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`development and modification of the expert’s assessment and Defendants’ contentions, and
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`the disclosures do not involve unfair surprise or result in unfair prejudice. As in most cases,
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`the parties’ theories and arguments evolve with the information generated in discovery.
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`Plaintiffs will have an opportunity to address the opinions in their reply expert report.
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`C.
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`Plaintiffs’ Motion to Strike the Expert Report of the Honorable Gerald J.
`Mossinghoff (ECF No. 264)
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`Plaintiffs contend that the expert report of the Honorable Gerald Mossinghoff8
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`should be stricken because Defendants did not disclose the report on or before the deadline
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`to serve opening expert reports, and because the witness is not an expert on any of the
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`technical issues in the case and cannot offer opinions on issues of law.
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`8 Expert Report of the Honorable Gerald J. Mossinghoff (ECF No. 257-4).
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`6
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`Case 1:14-cv-00366-JDL Document 291 Filed 08/31/17 Page 7 of 10 PageID #: 11802
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`Mr. Mossinghoff is an attorney and former patent examiner, who previously served
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`as Commissioner of Patents and Trademarks. Since January 1997, he has engaged in the
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`private practice of intellectual property law in Alexandria, Virginia.
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`According to his report, Mr. Mossinghoff “expect[s] to testify, both at deposition
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`and at trial, on the rules and procedural requirements governing the filing and prosecution
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`of patent applications in the USPTO and the grant of U.S. patents by the USPTO, and on
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`the duty of candor and good faith that those substantively involved in the preparation and
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`prosecution of a patent application owe to the USPTO.” (Expert Report of the Honorable
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`Gerald J. Mossinghoff ¶ 4.)
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`The balance of his report includes a “general overview of patent examination
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`procedures,” a description of the patent prosecution history for the patents-in-suit, an
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`overview of the “duty of candor and good faith to the USPTO,” a description of the
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`“broadest claim” in each of the patents according to Defendants’ expert, Dr. Bradley, an
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`excerpt of Dr. Harris’s deposition testimony, and a concluding statement Mr. Mossinghoff
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`understands that Dr. Bradley will express the opinion that “the examiners at the Patent
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`Office would not have found the claimed inventions new and patentable, had [the]
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`information [discussed in the Harris deposition excerpt] been disclosed.” (Id. ¶ 39.)
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`Defendants disclosed Mr. Mossinghoff’s report on the deadline established for
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`rebuttal reports. Plaintiffs argue that Mr. Mossinghoff’s proposed testimony is intended to
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`support Defendants’ recently proposed inequitable conduct counterclaim, and that the
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`report therefore should have been disclosed as a report on matters for which Defendants
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`bear the burden of proof at trial.
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`7
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`Case 1:14-cv-00366-JDL Document 291 Filed 08/31/17 Page 8 of 10 PageID #: 11803
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`Although Defendants argued that Mr. Mossinghoff’s designation was appropriate
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`regardless of the Court’s ruling on the motion to amend their answer to assert a
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`counterclaim based on Plaintiffs’ alleged inequitable conduct, the Court is not convinced
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`that Mr. Mossinghoff’s proposed testimony constitutes rebuttal testimony on the issue of
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`infringement. Rather, Mr. Mossinghoff’s testimony is relevant to Defendants’ allegation
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`of inequitable conduct.9 Insofar as the Court only recently granted Defendants leave to
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`assert an inequitable conduct claim, Defendants’ designation of Mr. Mossinghoff on that
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`issue cannot be deemed untimely. (Decision and Order, ECF No. 282.) That is, given that
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`the claim of inequitable conduct was just added, Plaintiffs cannot persuasively argue that
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`Defendants did not timely designate Mr. Mossinghoff as an expert witness on the
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`inequitable conduct issue.
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`Plaintiffs also argue that the proposed expert testimony is irrelevant because Mr.
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`Mossinghoff does not address any of the technical patent issues in the case and because
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`there is no need in the case for testimony from a “legal expert.” “The Federal Circuit,
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`which regularly hears questions of patent law, ‘has on numerous occasions noted the
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`impropriety of patent lawyers testifying as expert witnesses and giving their opinion
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`regarding the proper interpretation of a claim as a matter of law, the ultimate issue for the
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`court to decide.’” Tafas v. Dudas, 511 F. Supp. 2d 652, 661 (E.D. Va. 2007) (quoting
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`Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed.
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`9 Arguably, Mr. Mossinghoff also could provide a background explanation regarding the prosecution of the
`patents-in-suit.
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`8
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`Case 1:14-cv-00366-JDL Document 291 Filed 08/31/17 Page 9 of 10 PageID #: 11804
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`Cir. 1997). Furthermore, a legal expert should not be permitted “to testify about what
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`conclusion to reach on the issue of inequitable conduct, including any opinions as to breach
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`of the duty of disclosure, intent to deceive, or materiality.” Alfred E. Mann Found. for Sci.
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`Research v. Cochlear Corp., No. 2:07-08108, 2014 WL 12586105, at *10 (C.D. Cal. Jan.
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`3, 2014). In addition, the expert will not be permitted to instruct the fact finder on the
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`applicable law. Id. However, a patent lawyer may serve as an expert witness for purposes
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`of describing PTO practices and procedures. Sundance, Inc. v. DeMonte Fabricating Ltd.,
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`550 F.3d 1356, 1361 n.2 (Fed. Cir. 2008). In appropriate circumstances, such testimony
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`may include case-specific “background information” regarding the prosecution of the
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`patents-in-suit. Alfred E. Mann Found. for Sci. Research, 2014 WL 12586105, at *9.
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`On the current record, particularly given Defendants’ anticipated amended
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`counterclaim, the Court cannot discern whether Defendants intend to offer Mr.
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`Mossinghoff to testify to matters for which legal experts are typically precluded from
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`testifying in patent cases. The Court, therefore, will deny the motion subject to Plaintiffs’
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`ability to renew the motion after further development of Mr. Mossinghoff’s testimony.10
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`CONCLUSION
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`Based on the foregoing analysis, the Court denies Defendants’ Motion to Strike New
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`Contentions in [Steven H. Jury, Ph.D.’s] Reports (ECF No. 259), denies Plaintiffs’ Motion
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`10 Plaintiff has requested reconsideration of the Decision and Order on Defendants’ Motion to Amend
`Answer (ECF No. 282), through which decision and order the Court granted Defendants leave to assert the
`inequitable conduct counterclaim. (Motion for Reconsideration, ECF No. 285.) The Court recognizes that
`in the event the Court reconsiders Defendants’ ability to assert the counterclaim, the Court likely will have
`to revisit whether Mr. Mossinghoff was designated timely as an expert witness, and whether Mr.
`Mossinghoff’s testimony would be relevant to any of the pending claims or defenses.
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`9
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`Case 1:14-cv-00366-JDL Document 291 Filed 08/31/17 Page 10 of 10 PageID #: 11805
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`to Strike Portions of the Reports of Terrence M. Bradley, Ph.D. (ECF No. 263), and denies
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`without prejudice Plaintiffs’ Motion to Strike the Expert Report of the Honorable Gerald
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`J. Mossinghoff (ECF No. 264).
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`NOTICE
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`Any objections to this Order shall be filed in accordance with Federal Rule
`of Civil Procedure 72.
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`/s/ John C. Nivison
`U.S. Magistrate Judge
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`Dated this 31st day of August, 2017.
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`10
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