The opinion of the court was delivered by: Glenn T. Suddaby, United States District Judge
MEMORANDUM-DECISION and ORDER
Currently before the Court, in these two consolidated patent infringement actions filed by Optigen, LLC ("Plaintiff") against the six above-captioned entities and individuals, are the following two motions: (1) Plaintiff's motion for partial summary judgment against International Genetics, Inc., Genetic Fulfillment USA, Inc., PinPoint DNA Technologies, Inc., and Richard B. Dobbins (collectively "Defendants"); and (2) Defendants' motion to strike Plaintiff's motion for partial summary judgment and Plaintiff's expert's declaration. (Dkt. Nos. 193, 213.) For the reasons set forth below, Plaintiff's motion for partial summary judgment is granted in part and denied in part; and Defendants' motion to strike is denied.
A. Plaintiff's Claims in Its Amended Complaint
Plaintiff's Amended Complaint asserts the following six claims against Defendants: (1) a patent infringement and inducing infringement claim under 35 U.S.C. § 271(a) and (b) against Defendants PinPoint DNA Technologies ("Defendant PinPoint") and Richard Dobbins ("Defendant Dobbins"); (2) a patent infringement and inducing infringement claim under 35 U.S.C. § 271(a) and (b) against Defendants InGen ("Defendant InGen") and Dobbins; (3) an inducing infringement claim under 35 U.S.C. § 271(b) against Defendant Genetic Fulfillment USA ("Defendant Genetic"); (4) a claim of making misrepresentations under the Lanham Act against Defendants InGen and Dobbins; (5) a claim of unfair competition against Defendants InGen, Dobbins, and PinPoint; and (6) a claim that Defendant Dobbins is individually liable for the first, second, fourth, and fifth of the above-described claims. (See generally Dkt. No. 182 [Plf.'s Am. Compl.].)
Generally, these claims arise from the following factual allegations. Plaintiff is in the business of providing DNA-based diagnostic services to test for inherited diseases in dogs. (Id.) "United States Patent No. 5,804,388, entitled 'CHROMOSOME 9 AND PROGRESSIVE ROD-CONE DEGENERATION DISEASE GENETIC MARKERS AND ASSAYS' (the "388 patent'), [was] issued on September 8, 1998." (Id.) "Cornell Research Foundation, Inc. is the assignee of the '388 patent, [and Plaintiff] is the exclusive licensee of the '388 patent." (Id.) "United States Patent No. 7,312,037, entitled 'IDENTIFICATION OF THE GENE AND MUTATION RESPONSIBLE FOR PROGRESSIVE ROD-CONE DEGENERATION IN DOG AND A METHOD FOR TESTING SAME' (the "037 patent'), [was] issued on December 25, 2007." (Id.) "Cornell Research Foundation, Inc. is the assignee of the '037 patent, [and Plaintiff] is the exclusive licensee of the '037 patent." (Id.) The '388 patent and '037 patent relate to identifying whether a dog is a carrier of Progressive Rod-Cone Disease ("PRCD"), is predisposed to PRCD, or is genetically normal.*fn1 (Id.)
In 2006, Defendant Dobbins founded Defendant PinPoint, which offered a service called "Pawsitive I.D." for the DNA testing of dogs and cats. (Id.) "When Pawsitive I.D. was purchased by a customer, the customer was sent a kit that was used to collect a tissue sample[, which would] . . . then [be] mailed . . . back to [Defendant] PinPoint for analysis." (Id.) "In January 2008, [Plaintiff] notified [Defendants] PinPoint and Dobbins that their activity in selling, offering to sell, making and using genetic tests for PRCD by means of the Pawsitive I.D. testing kit constituted infringement of the '388 and '037 patents." (Id.) "By April 15, 2008, [Defendant] PinPoint was no longer offering the PRCD test." (Id.)
In 2008, "[Defendant] InGen was established in . . . Freeport, Bahamas" by [Defendant] Dobbins. (Id.) "[Defendant] InGen purchased assets from PinPoint[,] including the Pawsitive
I.D. product and trademark, database, and website domain names." (Id.) "The Pawsitive I.D. website (www.pawsitiveid.net) directs visitors to [Defendant] InGen's website (www.ingen.bs)." "[Defendant] Dobbins prepared the content of [Defendant] InGen's website." "The [Defendant] InGen website states that '[Defendant] InGen now offers the test for . . . PRCD that [Defendant] PinPoint was forced to withdraw in April 2008 due to patent issues. . . . [Defendant] InGen does not have these issues and has recommended the testing for this eye disease.'" (Id.) "On the [Defendant] InGen website, there is a question and answer column for InGen's customers[, which] includes" statements acknowledging that [Defendant] InGen's services would amount to patent infringement if offered in the United States, Canada and/or European Union.*fn2 (Id.) "[Defendant] InGen offers the Pawsitive I.D. testing service (including the PRCD test) for purchase through its website, including to customers in the United States." "[Defendant] InGen also advertises the Pawsitive I.D. testing service (including the PRCD test) for sale within the United States." (Id.)
"[Defendant] InGen has sold the Pawsitive I.D. testing service (including the PRCD test) to customers in the United States." (Id.) "[Defendant] InGen contracts with [Defendant Genetic] as a shipping contractor to fill the orders placed with [Defendant] InGen." (Id.) "When a customer places an order through [Defendant] InGen's website, [Defendant Genetic] ships the kit to the customer from Marietta, Georgia." (Id.) "Once the customer collects the sample from the dog or cat, the customer ships the sample to [Defendant Genetic] at a post office box in Atlanta, Georgia," and the sample is then forwarded to a laboratory in The Bahamas. (Id.)
Familiarity with the remaining factual allegations supporting the claims in Plaintiff's Amended Complaint is assumed in this Decision and Order, which is intended primarily for the review of the parties. (Id.)
B. Undisputed Material Facts Presented by Plaintiff's Motion for Partial Summary Judgment
Unless otherwise noted, the following is a general summary of the undisputed material facts presented by the parties' briefing of Plaintiff's motion. (Compare Dkt. No. 93, Attach. 12 [Plf.'s Rule 7.1 Statement] with Dkt. No. 212 [Defs.' Rule 7.1 Response].)
Defendant Dobbins formed PinPoint, a Georgia corporation, in 2006, and was its Chief Executive Officer ("CEO") and Manager. Defendant PinPoint offered a service called "Pawsitive I.D." for the DNA testing of dogs and cats, including genetic testing for PRCD. Defendant PinPoint's genetic testing for PRCD was carried out in the United States, specifically by Texas A&M University's Doctor Eleanore Conant ("Dr. Conant"). In January 2008, Plaintiff sent a cease-and-desist letter informing Defendants Dobbins and PinPoint that its PRCD testing method infringed on both the '388 and '037 patents. After receiving Plaintiff's cease-and-desist letter, Defendant PinPoint continued to sell the service for genetic testing for PRCD. Approximately 1,600 infringing tests were sold by Defendant PinPoint after it received Plaintiff's cease-and-desist letter.
Defendant InGen is a Bahamian corporation with an address of The Bloneva Building, Freeport, The Bahamas. Defendant Dobbins is the sole owner, General Manager, and CEO of Defendant InGen. Defendant InGen was established in 2008, in direct response to Plaintiff's allegations of patent infringement in its cease-and-desist letter and for the sole purpose of offering patent-protected genetic tests from an offshore site where the patents-in-suit were not registered. Defendant InGen offers diagnostic services to test for genetic diseases in dogs, including the testing for PRCD. Defendant InGen maintains that it purchased assets from Defendant PinPoint, including the Pawsitive I.D. product and trademark, database, and website names; however, it is disputed among the parties whether Defendant InGen gave consideration in exchange for Defendant PinPoint's assets.*fn3
Defendant InGen operates out of an office located at 1395 Cobb Parkway, N.W., Marietta, Georgia. Sherrill Williams ("Williams") is the sole employee of Defendant InGen and began working there on January 1, 2010. Williams is Defendant InGen's Operations Manager, and she works exclusively out of the Marietta office. Williams has never traveled to The Bahamas. Williams was a Defendant PinPoint employee until December 31, 2009.
Defendant InGen has no employees in The Bahamas. Defendant Dobbins conducts most of his supervision of Defendant InGen's business from Georgia and infrequently visits The Bahamas.
Defendant InGen's phone and facsimile numbers begin with a "678" area code, which is the area code for the Atlanta area. Defendant InGen sends shipments from, and receives shipments at, its Georgia location.
Defendant InGen maintains a website accessible to customers located in the United States. The website is powered by a server located in The Bahamas. The website allows anyone viewing the website to order Defendant InGen's genetic testing products, including the PRCD test. Defendant InGen offers its genetic testing services for sale through its website to customers located in the United States. In addition, Defendant InGen actually sells its genetic testing services to customers located in the United States. Payment for products can be made on Defendant InGen's website; and customers within the United States can access testing results through Defendant InGen's website. Defendant InGen has mailed advertisements for its testing services from its address in Marietta, Georgia, to customers located in the United States. Approximately 80% to 85% of Defendant InGen's customers are located in the United States.
Defendant Genetic is located in the same office as is Defendant InGen. It has one employee, Brian Walker ("Walker"); however, Williams and Defendant Dobbins have assisted Walker with his duties at Defendant Genetic. Defendant Genetic does not have its own telephone number, facsimile number, or email account. Defendant Genetic's only customers are Defendants InGen and PinPoint. When a customer places an order through Defendant InGen's website, Defendant Genetic receives a notice, assigns an identification number to the test purchased, packages a kit for the customer to collect a sample of hair (or other specimen) from its dog, and then ships the kit to the customer through FedEx. Once the customer collects the sample from its dog, the customer ships the sample back to Defendant Genetic in Marietta, Georgia. Defendant InGen then contracts with AZCO Biotech in San Diego, California for DNA extraction services.*fn4 Once Defendant InGen receives the DNA extraction from AZCO Biotech, it forwards the DNA sample to its laboratory in Freeport, The Bahamas, for testing.
Defendant InGen has an agreement with Chela-Tech Laboratories ("Chela") under which Chela runs the genetic tests using its own employees. Dr. Conant (from Texas A&M University) trained a Chela laboratory technician on PRCD testing on two separate occasions. In addition, Dr. Conant traveled to The Bahamas to conduct PRCD testing in 2009. Defendant InGen does not own or operate a laboratory in The Bahamas.
Familiarity with the action's remaining undisputed material facts, as well as the action's disputed material facts, as set forth in the parties' Rule 7.1 Statement and Rule 7.1 Response, is assumed in this Decision and Order, which (again) is intended primarily for review by the parties. C. Parties' Briefing on Plaintiff's Motion for Partial Summary Judgment
Generally, in support of its motion for partial summary judgment, Plaintiff makes the following six arguments: (1) Defendants PinPoint and Dobbins infringed (and admitted to infringing)*fn5 upon Plaintiff's '388 and '037 patents by offering for sale, selling, and performing the patented method of detecting PRCD to customers in the United States, including selling approximately 1,600 genetic tests for PRCD after Defendants PinPoint and Dobbins received Plaintiff's cease-and-desist letter; (2) Defendants InGen and Dobbins infringed (and continue to infringe) upon Plaintiff's '388 and '037 patents by offering to sell and selling the patented PRCD testing method to customers in the United States, even though (a) the actual testing is conducted outside the United States, and (b) the offers to sell and sales are made through a website powered by a foreign server; (3) Defendant InGen and Dobbins have violated the Lanham Act by misrepresenting the status of Defendant InGen's operations, as well as the nature, quality, and characteristics of its products; (4) Defendants InGen, PinPoint, and Dobbins are liable for unfair competition under New York law because they have "utilized [P]laintiff's intellectual property for their own benefit" by "intentionally and wrongfully divert[ing] [Plaintiff's] business to themselves"; (5) Defendant InGen is liable as a successor to Defendant PinPoint for Defendant PinPoint's infringement because (a) Defendants PinPoint and InGen engaged in a "de facto merger," or (b) Defendant InGen is a "mere continuation" of Defendant PinPoint's business; and (6) Defendant Dobbins is personally liable for Defendants InGen and PinPoint's infringement because he "dominates every aspect of both" corporations. (See generally Dkt. No. 193, Attach.
1.) Based on these six arguments, Plaintiff moves for partial summary judgment on its First, Second, Fourth, Fifth, and Sixth Causes of Action, as set forth in its Amended Complaint.*fn6 (See generally Dkt. No. 182.)
Generally, in their response, Defendants make the following five arguments: (1) Plaintiff's motion for partial summary judgment on the patent infringement claims against PinPoint, Dobbins and InGen fails because (a) Plaintiff neglects to include in its motion a meaningful claim construction, and (b) Defendants' PRCD testing method takes place outside of the United States, which, to the extent that testing method infringes on Plaintiff's United States patents, insulates them from liability; (2) Plaintiff has failed to prove that the five-identified statements are either literally false or misleading; (3) because Defendants InGen, PinPoint, and Dobbins are not liable for patent infringement, they cannot be liable for unfair competition; (4) because Plaintiff, as a patent licensee, did not expend labor or talent producing the patented methods, it does not have a claim for unfair competition; (4) because several material facts are in dispute as to whether Defendant InGen is liable as a successor to Defendant PinPoint, this claim is more appropriately decided by a factfinder at trial; and (5) Defendant Dobbins is not personally liable for the alleged patent infringement because he is not the "alter ego" of either Defendants PinPoint or InGen. (Dkt. No. 213, Attach. 1 at 13-25.)
Generally, in its reply, Plaintiff makes the following five arguments: (1) because Defendants have failed to raise a triable dispute of material fact as to Plaintiff's patent infringement claims, Plaintiff's motion on this claim is unopposed; (2) Defendants InGen and Dobbins continue to misrepresent the operations of Defendant InGen's business activity in violation of the Lanham Act; (3) Plaintiff's argument of unfair competition is unopposed by Defendants because Defendants do not dispute that they have "engaged in a marketing scheme intended to harm [Plaitniff's] reputation;" (4) Defendants admit to the pertinent facts demonstrating that Defendant InGen is liable for Defendant PinPoint's infringement as successor to Defendant PinPoint; and (5) Defendant Dobbins "dominates" Defendants PinPoint and InGen. (Dkt. No. 216 at 4-9.)
D. Parties' Briefing on Defendants' Motion to Strike Plaintiff's Motion for Partial Summary Judgment and Its Expert Declaration
Generally, in support of their motion to strike, Defendant makes the following arguments: (1) Plaintiff's motion for partial summary judgment is untimely because it was filed after the deadline imposed by Magistrate Judge Baxter's Order dated July 12, 2011 ("the July Order"); and (2) Plaintiff's expert declaration may not be considered in support of Plaintiff's motion for partial summary judgment because Plaintiff's expert disclosure is untimely and does not comply with Fed. R. Civ. P. 26(a)(2)(B). (See generally Dkt. No. 211, Attach. 1 at 6-13.)
More specifically, regarding their motion to strike Plaintiff's motion for partial summary judgment, Defendants argue that Plaintiff's motion is untimely because it was filed after the September 3, 2010, motion deadline set by Magistrate Judge Baxter in his Order dated March 24, 2010 ("the March Order"). (Dkt. No. 213, Attach. 1 at 7-8.) Defendants make this argument notwithstanding Magistrate Judge Baxter's July Order permitting "any further substantive motions, to the extent not inconsistent with District Judge Suddaby's prior orders and opinions, [to] be filed by 9/30/11." (Dkt. No. 190.) Defendants argue, however, that the July Order (which also Ordered Defendant Dobbins to produce certain personal tax returns and bank records) allowed motions to be filed up until September 30, 2011, only if they relate to or arise from Defendant Dobbins' disclosure of his tax returns and bank records. (Dkt. No. 213, Attach. 1 at 7 [arguing that "the Court also extended the period to file 'substantive' motions arising out of information obtained during this limited scope discovery extension until September 30, 2011"].) As a result, according to Defendants, because Plaintiff's motion for partial summary judgment arises from information that Plaintiff had in its possession long-before the July Order and does not relate to Defendant Dobbins' tax returns or bank records, Plaintiff was required to file its motion by September 3, 2010, in accordance with the March Order. (Id. at 8-9.)
Regarding their motion to strike Plaintiff's expert declaration, Defendants argue that the Court should strike Dr. Gregory Acland's declaration because Plaintiff's disclosure of this expert witness is (1) untimely (in that Plaintiff was required to make its expert disclosures by March 26, 2010, but did not disclose its expert, Dr. Gregory Acland, until June 23, 2011), and (2) not in compliance with Fed. R. Civ. P. 26 (in that the disclosure was not accompanied by a valid report).*fn7 (Dkt. No. 211 at 12-13.)
In response, Plaintiff makes the following arguments: (1) its motion for partial summary judgment is timely because it complies with the July Order; (2) because its expert disclosure was timely under Fed. R. Civ. P. 26(a)(2)(B), its expert declaration should be considered; and (3) it was not required to submit an expert report pursuant to Fed. R. Civ. P 26(a)(2)(B) because Dr. Gregory Acland ("Dr. Acland") is not a witness that is "retained or specially employed to provide expert testimony in the case or one whose duties as [Plaintiff's] employee regularly involve[s] giving expert testimony." (See generally Dkt. No. 216 at 6-11.)
II. RELEVANT LEGAL STANDARDS
A. Legal Standard Governing Motions for Summary Judgment
Because the parties to this action have demonstrated, in their memoranda of law, an accurate understanding of the legal standard governing motions for summary judgment, the Court will not recite that well-known legal standard in this Decision and Order, but will direct the reader to the Court's decision in Pitts v. Onondaga Sheriff's Dep't, 04-CV-0828, 2009 WL 3165551, at *2-3 (N.D.N.Y. Sept. 29, 2009) (Suddaby, J.), which accurately recites that legal standard.
B. Legal Standards Governing Relevant Portions of Plaintiff's Claims
1. Claims of Patent Infringement Under 35 U.S.C. § 271(a)
When resolving patent infringement claims, a court must undergo a two-step analysis. "The first step is determining the meaning and scope of the patent claims asserted to be infringed. . . . The second step is comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). "The first [step] presents a legal question to be resolved by the courts, while [question presented in the second step] is generally reserved for the fact finder." Pall Corp. v. Cuno Inc., 03-CV-0092, 2007 WL 2363019, at *3 (E.D.N.Y. Aug. 14, 2007) (citing Markman, 52 F.2d at 981 [noting, however, that a court may use its construction of the claim in framing its jury charge, as well as in deciding dispositive motions]). In addition, it is important to note that, in the second step, "[t]o establish infringement, every limitation set forth in a patent claim must ...