The opinion of the court was delivered by: Michael A. Telesca United States District Judge
Plaintiff Degelman Industries Ltd., ("Degelman") brings this action pursuant to federal patent law, (codified at 35 U.S.C. § 100 et. seq.), claiming that defendants Pro-tech Welding and Fabrication, Inc., ("Pro-Tech") and Michael P. Weagley are infringing upon Degelman's United States Patent no. 6,845,576 (issued on January 25, 2005)(hereinafter "the '576 Patent"), as well as United States Design Patent nos. 478,097 (the '097 Patent), 519,128 (the '128 Patent), and 519,129 (the '129 Patent)(collectively "the design patents"). The '576 Patent, entitled "Materials Moving Blade," generally discloses a pushing blade that is attached to heavy equipment vehicles (such as a bulldozer), for the purpose of moving earth, debris or snow. The blade is fitted with sidewalls that extend forward from each end of the blade, which sidewalls prevent the material being moved from escaping past either end of the blade. The purported novelty of the blade disclosed in the '576 Patent is that, inter alia, it is fitted with a unique strengthening gusset that is designed to strengthen the connection between the blade and the sidewalls, and is also designed to prevent snow or other material from getting caught or stuck under the gusset. The design patents, each of which is entitled "Snow Moving Apparatus" disclose specific ornamental designs for a snow moving apparatus.
The parties have filed several motions, including: plaintiff's motion for partial summary judgment (docket item no. 77); plaintiff's motion to preclude expert testimony and reports (docket item no. 78) defendants' motion for partial summary judgment, and to exclude expert testimony (docket item no. 80); plaintiff's motion to strike (docket item no. 86); defendants' motion to preclude expert testimony (docket item no. 87); plaintiff's second motion to strike (docket item no. 97); and defendants' motion to supplement the record (docket item no. 111). Because of the complexity of the issues raised in the parties' motions, by Order dated August 11, 2010, I appointed Special Master Joseph W. Berenato, III, to hear and consider the parties' motions, and to issue a Report and Recommendation to the Court as to how each motion should be decided. I further Ordered that the parties would be given additional time to file objections to the Special Master's Reports and Recommendations, and that the findings of the Special Master would be reviewed de novo by this Court.
THE SPECIAL MASTER'S REPORTS AND RECOMMENDATIONS
Special Master Berenato conducted a hearing on the parties' motions, and thereafter issued several Reports and Recommendations recommending how the parties' motions should be decided. In his first Report and Recommendation (docket item no. 131) the Special Master recommended that Defendants' motion for partial summary judgment (docket item no.80) be granted in-part and denied in-part. In his second Report and Recommendation (docket item no. 132), the Special Master recommended that plaintiff's motion for partial summary judgment (docket item no. 77) be denied. In the third Report and Recommendation (docket item no. 133), Special Master Berenato recommended that: plaintiff's motion to preclude expert testimony and reports (docket item no. 78) be granted in-part and denied in-part, and that defendants' motion to exclude expert testimony and reports (docket item nos. 80 and 87) be granted in-part and denied in-part. In his fourth Report and Recommendation (docket item no. 134), the Special Master recommended that plaintiff's motions to strike the Declarations of Donald W. O'Brien (docket item nos. 86 and 97) be granted. In the fifth Report and Recommendation issued by Special Master Berenato (docket item no. 135) the Special Master recommended that defendants' motion to supplement the record with the Declaration of Duane C. Basch ("Basch") (docket item no. 111) be granted. In the sixth Report and Recommendation, (docket item no. 137) Special Master Berenato recommended that plaintiff's motion to strike the Affidavit of Leslie Craig ("Craig") (docket item no. 97) be granted. Finally, in his Seventh Report and Recommendation (docket item no. 138), the Special Master recommended that plaintiff's motion to strike the Affidavit of Michael P. Weagley ("Weagley") (docket item no. 86) be denied.
I. Plaintiff's Objections
The parties object to certain of the recommendations made by Special Master Berenato. Plaintiff objects to the Special Master's Recommendation that its motion for summary judgment on the issue of infringement of the '128 design patent be denied. According to the plaintiff, it set forth a prima facie case of infringement of that patent, and the defendant failed to produce any evidence to rebut plaintiff's showing of infringement by defendants' products. Plaintiff also objects to the Special Master's recommendation that it's expert David J. Quesnel ("Quesnel") not be allowed to testify as to infringement of the plaintiff's patents by the defendants' products. Degelman claims that it established Quesnel's credentials and authority to provide expert testimony on the infringement of the plaintiff's patents, and therefore the Special Master erred in recommending that he be precluded from testifying. Finally, the plaintiff contends that the Special Master should have recommended that its motion to preclude the testimony of Jerre Heyer ("Heyer") be granted in its entirety, and that Special Master Berenato erred in recommending that Heyer be allowed to testify as an "ordinary observer."
II. Defendants' Objections
Defendants object to several aspects of the Special Master's Reports and Recommendations. Initially, the defendants contend that the Special Master erred in recommending that its motion for summary judgment on the issue of non-infringement of the design patents be granted in-part and denied in-part. While defendants assert that the Special Master properly recommended that the defendants established non-infringement of the '097 and '129 patents by certain of its products, the defendants contend that Special Master Berenato should have concluded that none of the allegedly infringing products infringed any of the design patents.
Defendants further argue that the Special Master should have recommended that the '576 Patent be found invalid on the issues of anticipation and/or obviousness. According to the defendants, they sufficiently established that the invention disclosed in the '576 Patent is anticipated by a pull plow and a snow blower, and is rendered obvious by previously existing products and previously issued patents.
Defendants next object to the Special Master's recommendation that its motion seeking a declaration that the design patents are invalid as obvious be denied. According to the defendants, they established by clear and convincing evidence that the design patents are obvious in light of prior-art snow removal apparatuses.
Defendants also object to Special Master Berenato's recommendation that the testimony of their expert Nicholas P. Godici ("Godici") be limited to testimony regarding practices and procedures before the Patent and Trademark Office("PTO"). Defendants contend that Godici is qualified to testify on several other issues, including whether or not the plaintiff engaged in inequitable conduct, and whether or not the patents in-suit are valid.
Similarly, defendants object to Special Master Berenato's recommendation that the testimony of Alan P. Douglas ("Douglas") be restricted to testimony regarding PTO practices and procedures. Defendants assert that Douglas is qualified to testify on the additional issues of validity and inequitable conduct.
Defendant objects to Special Master Berenato's recommendation that the testimony of its proposed expert William Leonard ("Leonard") be limited to testimony regarding the design and fabrication of reinforcing members for reinforcing welded joints. According to the defendants, Leonard is qualified to, and should be allowed to, testify on issues of patent validity, and specifically obviousness. Finally, defendants contend that the Special Master should have recommended that the proposed expert testimony of Anthony Dannible ("Dannible") on the issue of damages be precluded because of alleged flaws in Dannible's methodology in reaching his conclusions. Special Master Berenato recommended that Dannible's testimony be allowed because he is a qualified expert on the issue of damages, and because his conclusions, and the rationale for reaching his conclusions, go to the weight of his testimony, not its admissibility.
For the reasons set forth below, I deny the parties' objections to the Special Master's Reports and Recommendations, and adopt the Report and Recommendations in their entirety, without modification.
Pursuant to 28 U.S.C. § 636(b)(1), after the filing of a Report and Recommendation, any party may serve and file written objections to such proposed findings and recommendations. After such filing,
[a] judge of the court shall make a de novo determination of those portions of the report or specified proposed finding or recommendations to which objection is made. A judge of the court may accept, reject, or modify, in whole or in part, the findings or recommendations made by the magistrate.
In the instant case, however, upon appointing the Special Master, I Ordered that "[a]ll aspects of the Special Master's Report and Recommendation(s), shall be reviewed de novo by the court." See August 11, 2010 Order appointing Special Master at p. 1. Accordingly, I review all aspects of the Special Master's seven Reports and Recommendations, including those portions to which no specific objection was filed, de novo.
II. Motions to Strike A. Declarations of Donald W. O'Brien
Plaintiff has moved to strike the declarations of Donald W. O'Brien ("O'Brien") that were submitted in support of and in opposition to the parties' competing motions for summary judgment on grounds that O'Brien, as attorney for the defendants, lacks personal knowledge of the events and or facts that are the subject of his declaration, and therefore may not, under Rule 56(c) of the Federal Rules of Civil Procedure be considered by the Court.
Rule 56(c)(4) of the Federal Rules of Civil Procedure provides that "[a]n affidavit or declaration used to support or oppose a motion must be made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant or declarant is competent to testify on the matters stated." Fed. R. Civ. P. 56(c)(4). Despite the requirement that a declaration be made upon personal knowledge, attorneys often submit declarations in support of or in opposition to a motion for summary judgment for the purpose of introducing documents into the record. S.E.C. v. Competitive Technologies, Inc., 2006 WL 3346210, *1, (D. Conn., Nov. 6, 2006)("attorney affidavits are acceptable when . . . a party uses them only as a vehicle through which to present admissible evidence relevant to the matter at hand") Although such declarations often do not rest entirely on personal knowledge, and it is expected that some advocacy will appear in an attorney declaration, (See e.g. Gasser v. Infanti Intern., Inc., 2008 WL 2876531, *7 (E.D.N.Y., July 23, 2008)(noting that "some degree of characterization" of evidence is to be expected in an attorney affidavit)courts will strike attorney affidavits or declarations where the documents are rife with argument, seek to introduce inadmissible evidence, or contain unsubstantiated factual averments. Hollander v. American Cyanamid Co., 172 F.3d 192, 198 (2nd Cir., 1999) (affirming district court's decision striking attorney affidavit where the affidavit was "riddled with inadmissible hearsay, conclusory statements and arguments, and information clearly not made on the affiant's personal knowledge," and "more resemble[d] an adversarial memorandum than a bona fide affidavit.")
In the instant case, Special Master Berenato recommended that plaintiff's motion to strike the declarations of O'Brien be granted with respect to the actual averments made by O'Brien, but that the exhibits attached thereto be admitted to the record. After reviewing the Declarations de novo, I affirm and adopt this recommendation. I find that the O'Brien Declarations contain impermissible legal argument, excessive commentary on the evidence, and in many instances, averments are based on inadmissible expert testimony. The documentary evidence that O'Brien introduces in his declarations, however, may stand on their own merits, and should not be stricken merely because the accompanying declaration is not permissible under Rule 56(c). Accordingly, and for the reasons stated by the Special Master in his Report and Recommendation (docket item no. 134), I grant plaintiff's motion to strike the O'Brien Declarations (docket item nos. 83, 91, and 92) with the exception that the documents attached thereto may be admitted.
B. Declaration of Leslie Craig.
Plaintiff moves to strike the affidavit of Leslie Craig, a proposed expert witness identified by the defendants. Defendants, in opposition to plaintiff's motion for partial summary judgment, submitted an affidavit from Craig to establish facts regarding purported prior art that according to the defendants, renders plaintiff's patents invalid. Plaintiff moves to strike the affidavit on grounds that Craig was never disclosed as a potential witness in defendants' initial or supplemental discovery disclosures.
Special Master Berenato recommended that the Craig affidavit be stricken on grounds that the defendants failed to timely disclose Craig's identity or that he would be providing expert testimony. The Special Master found no good cause for defendants' failure to timely identify Craig, and further found that plaintiff would be prejudiced if Craig's affidavit were allowed to stand.
Considering the Craig affidavit, and the parties' arguments for an against allowing the affidavit de novo, I find that defendants have failed to establish good cause for failing to identify Craig in a timely manner, and that the plaintiff would be prejudiced if the court were to allow the affidavit to be considered. With respect to prejudice, I find that the lack of disclosure of Craig as a potential expert witness prejudiced plaintiff, as plaintiff did not have the opportunity to depose or examine Craig. I further find, for the reasons stated by the Special Master, that the mention of Craig's name during a deposition did not suffice to put plaintiff on notice that Craig could be called to provide expert testimony on any subject.
With respect to defendants' contention that they did not disclose Craig as an expert because they did not anticipate the arguments plaintiff would raise in opposition to defendants' motion for summary judgment, such a reason does not establish good ...