THIS CAUSE is before the Court on Plaintiff's Motion to Strike Portions of the Supplemental Expert Report of Dr. Robert M. Kimmel Relying on Prior Art Not Identified by Defendant ("the Motion") (Doc. 76) and Defendant's response in opposition to the Motion ("the Response") (Doc. 79).
This is a patent infringement case (Doc. 1), in which Defendant challenges the validity of Plaintiff's asserted patents (see, e.g., Doc. 55). The Court set a deadline of March 11, 2011 for Defendant to "identify the prior art it relies upon for its invalidity defense." (Doc. 40.) In the Motion, Plaintiff seeks an order striking those portions of the Supplemental Expert Report of Dr. Robert M. Kimmel on the Invalidity of the Asserted Claims of U.S. Patent 7,134,551 ("Dr. Kimmel's Supplemental Expert Report") (Doc. 76-2), in which Dr. Kimmel relies on two particular pieces of prior art that were disclosed after the March 11, 2011 deadline set by the Court. (Doc. 76.) Plaintiff also requests that Dr. Kimmel be precluded from testifying at trial on any opinion based on the untimely disclosed prior art. (Id.) For the reasons stated herein, the Motion is due to be DENIED.
In this patent infringement action, Plaintiff contends that Defendant is infringing the claims of U.S. Patent No. 7,134,551 ("the '551 Patent"). (Doc. 1.)*fn1 Defendant has asserted since early in this case, and continues to assert, that the '551 Patent is invalid for failure to meet one or more of the requirements for patentability under the Patent Act, 35 U.S.C. § 1 et seq. (Docs. 23, 24, 39, 55 & 81.) Among other arguments, Defendant asserts that the '551 Patent is invalid because it is anticipated (35 U.S.C. § 102) or obvious (35 U.S.C. § 103) in view of prior art. (Docs. 23, 24, 39, 55 & 81.)
There is an ongoing priority dispute between the parties regarding the '551 Patent and certain prior art asserted by Defendant in support of its invalidity arguments. For instance, on November 15, 2010, Defendant asserted U.S. Patent Publication No. 2004/0089671 ("the '671 Publication") as prior art to the '551 Patent. (Doc. 24 at 8.) The parties agree that the earliest effective filing date for the '671 Publication is November 7, 2002. (Doc. 35 at 8; Doc. 79 at 4.) On December 15, 2010, Plaintiff responded, stating that the '671 Publication was not prior art to the '551 Patent because the inventor of the '551 Patent, Mr. Glen Harrelson, had conceived and reduced to practice the subject matter of the claims of that patent at least as early as November 5, 2002. (Doc. 35 at 9; Doc. 35-2 at 62-65.) On January 6, 2011, Defendant responded, asserting that Charles A. Miller, the sole inventor listed on the '671 Publication, had conceived and reduced to practice the invention contained in that publication as early as February 2002. (Doc. 39 at 3.)
After the parties submitted their case management report, the Court entered an order on January 10, 2011, which stated among other things, "No later than March 11, 2011, [Defendant] will identify the prior art it relies upon for its invalidity defense." (Doc. 40.) On March 11, 2011, pursuant to that Order, Defendant served on Plaintiff its identification of prior art ("the Original Identification of Prior Art") (Doc. 76-1). The Original Identification of Prior Art did not include the Miller Toe Saver Carton ("the Toe Saver Carton") or GPI's Fridge Vendor Carton ("the Fridge Vendor Carton") (compare Doc. 76-1 with Doc. 79-3), which are the focus of the present Motion.
On April 18, 2011, after construing the disputed claims of the '551 Patent (Doc. 58), the Court entered a case management and scheduling order (Doc. 59). The initial case management order was eventually superseded on July 7, 2011, by the Amended Case Management and Scheduling Order. (Doc. 72.) Pursuant to the Amended Case Management and Scheduling Order, the discovery deadline was September 9, 2011, Plaintiff's disclosure of expert reports was due by September 16, 2011, and Defendant's disclosure of expert reports was due by September 23, 2011. (Id.)
It appears that the parties conducted extensive discovery throughout July and August 2011 in order to comply with the Court's case management deadlines. (See Doc. 76 at 2.) Defendant deposed Plaintiff's Federal Rule 30(b)(6) witness on August 24, 2011, which, according to Defendant, is what "crystallized" for Defendant the need to rely on additional prior art, not disclosed on March 11, 2011. (Doc. 79 at 2, 4.) Defendant served Plaintiff, on August 31, 2011, with amended discovery responses, in which it first indicated its intent to rely on the subject prior art. (See Doc. 76 at 2.) On September 8, 2011, Defendant served Plaintiff with Dr. Kimmel's Supplemental Expert Report. (Doc. 76-2.)*fn2 This report relies on two previously undisclosed pieces of alleged prior art: the Toe Saver Carton and the Fridge Vendor Carton. (Id.)
On September 12, 2011, Plaintiff filed the present Motion. (Doc. 76.) On September 13, 2011, Defendant served Plaintiff with its supplemental identification of prior art ("the Supplemental Identification of Prior Art"), which included the Toe Saver Carton and the Fridge Vendor Carton. (Doc. 79-3.) On September 16, 2011, Plaintiff served Defendant with the Supplemental Rebuttal Expert Report Regarding Patent Validity by Sterling Anthony on Behalf of Plaintiff Graphic Packaging International, Inc. ("Mr. Anthony's Supplemental Expert Report") (Doc. 83-6 at 37-82; Doc. 83-7 at 1-56).*fn3
This report addressed and rebutted, among other things, Dr. Kimmel's contentions of invalidity based on the Toe Saver Carton and the Fridge Vendor Carton.
If a party or its attorney fails to obey a scheduling or other pretrial order, "the court may issue any just orders, including those authorized by Rule 37(b)(2)(A)(ii)-(vii)."
FED. R. CIV. P. 16(f)(1).*fn4 Among other possible sanctions, Rule 37(b)(2)(A) allows the Court to prohibit a party "from introducing designated matters in evidence." FED. R. CIV. P. 37(b)(2)(A)(ii).*fn5
However, as a general matter, "the Court vastly prefers to decide cases on their merits," rather than exclude evidence. Collins v. United States, 2010 WL 4643279, at *5 (M.D. Fla. Nov. 9, 2010) (citation omitted). Moreover, "[t]he exclusion of critical evidence is an extreme sanction which is not normally imposed absent a showing of willful deception or flagrant disregard of a court order by the proponent of ...