The opinion of the court was delivered by: David E. Peebles U.S. Magistrate Judge
This is a patent infringement action involving two direct competitors, both of which are engaged in the commercial manufacture of caps primarily used to house liquid medical or scientific samples for testing.*fn1 At issue are two related patents -- a product patent which concerns open-top caps with elastomer septums bonded to the undersides of the caps, and a method patent disclosing a means of adhesion for use in various settings, including to manufacture such bonded caps.
Currently pending before the court are cross-motions for summary judgment, directed to the issues of patent validity, infringement, and equitable estoppel, as well as an application by the plaintiff to strike reports proffered by an expert retained by the defendants to address the question of patent validity and to preclude him from testifying at trial. For the reasons set forth below, I conclude that certain of the patent claims no longer asserted by the plaintiff, but implicated in defendants' declaratory judgment counterclaims, are invalid as obvious, and no reasonable juror could conclude otherwise. With this exception, however, I deny the pending motions and will set the matter down for trial.
Plaintiff Integrated Liner Technologies, Inc. ("ILT"), based in Albany, New York, is a commercial manufacturer and seller of bonded caps for use in the medical, health care and other related fields. Defendants Specialty Silicone Products, Inc. and SSP, Inc. (collectively, "SSP"), both of which are headquartered in Ballston Spa, New York, together compete with ILT, manufacturing and selling similar bonded caps.
At issue in this case are two patents, a product patent and a method patent, both of which list Alan R. Gee, William R. Delaney, and Paul M. Petrosino as inventors and have been assigned to ILT. The first of those, U.S. Patent No. 5,647,939 (the "'939 Patent"), was issued by the United States Patent and Trademark Office ("PTO") on July 15, 1997, and is entitled "Method of Bonding a Cured Elastomer to Plastic and Metal Surfaces." The second, U.S. Patent No. 6,234,335 (the "'335 Patent"), was issued on May 22, 2001, and is entitled "Sealable Container and Open Top Cap with Directly Bonded Elastomer Septum."*fn2 The two patents are related, tracing their roots to a patent application filed on December 5, 1994, and the specifications and drawings contained in both patents are virtually identical.
Although several of the claims of the method patent are broader, the patents in suit generally relate to the manufacture of a cap designed to allow the transfer of a liquid sample into and from a bottle, vial, or other similar type of container by way of a needle inserted through a septum located in the center of the cap. The technology disclosed in the two patents, as it relates to the manufacture of caps, encompasses the bonding of an elastomer, such as a silicone rubber, to the inside surface of an inert plastic or metal cap without the intervening presence of an adhesive or plastic material potentially capable of contaminating any samples to be held in the vessel.
An example of the caps associated with ILT's patented technology is depicted in Figures 1 (top view) and 1A (cross section) of the '939 and '335 Patents, as follows:
In the example represented in Figures 1 and 1A, a polypropylene cap 10 with a hole 12 in the top 14 is married to a thin layer of Teflon 21 bonded to a sheet of silicone rubber 22 by standard means such as by pressing. Together they are then cut to form a septum 20,sized to fit tightly within the interior of the cap 10.
The essence of the two patents involves the means by which the elastomer septum is secured to the underside of a plastic or metal cap. The '939 Patent teaches a method of bonding that entails ionization of the two surfaces to be bonded -- the elastomer and the inner surface of the plastic or metal cap -- and applying pressure to form a direct bond between the two surfaces. '939 Patent, 1:6-7; 2:52-65. According to that patent, the required ionization can be accomplished through a variety of methods, including by treatment "with a flame, corona or plasma discharge as well as by radiation or high intensity UV light." Id. at 2:66-67. The '335 Patent, the sister product patent, describes the finished cap resulting from use of the ionization bonding method disclosed in the '939 Patent.
ILT's complaint asserts that SSP is manufacturing, using, offering for sale and/or selling plastic bonded caps that infringe claims included within the two patents in suit. While ILT initially claimed infringement of other patent claims as well, the asserted claims have been narrowed to include only Claims 1 and 4-7 of the '335 Patent, and Claims 18-20 of the '939 Patent.
ILT commenced this action on November 16, 2009, alleging infringement of the two patents in suit by SSP.*fn3 Dkt. No. 1. In its answer, as amended, SSP has responded by generally denying plaintiff's infringement allegations, asserting various defenses, and interposing counterclaims seeking a declaratory judgment on the issues of both non-infringement and patent invalidity. Dkt. No. 19.
On February 15, 2011, upon referral by the then-assigned trial judge, Chief District Judge Gary L. Sharpe, I conducted a Markman*fn4 hearing, in order to construe the claim terms upon which the parties were unable to reach agreement. Following that hearing, I issued a report, dated April 7, 2011, in which I recommended the following constructions of the disputed patent terms:
Disputed Term Proposed Construction primer a non-adhesive substance utilized as a surface treatment that enhances bond strength adhesive a substance that is capable of bonding two or more solids together by surface attachment bond directly/directly bonded joined together through surface contact, potentially with the presence of an intervening material layer a detectable quantity of a material that is at least partially distributed on a surface.
That recommendation was adopted by Chief Judge Sharpe by decision and order dated October 26, 2011. Dkt. No. 62.
Now that discovery is closed, the parties have submitted cross-motions for consideration by the court. ILT has moved for summary judgment requesting findings of patent validity and infringement as a matter of law. Dkt. Nos. 69, 70. For its part, SSP has similarly moved for summary judgment, seeking a finding of patent invalidity, based upon anticipation and obviousness, and a determination that plaintiff ILT should be equitably estopped from asserting its claims of patent infringement.
Dkt. No. 68. In addition, ILT has interposed a non-dispositive motion, asking the court to strike the opening and rebuttal reports of R.J. Del Vecchio, one of defendants' experts, and to preclude his testimony at trial. Dkt. No. 94. Oral argument was conducted in connection with the pending motions, all of which are actively opposed, on August 2, 2012, following which decision was reserved.
A. Plaintiff's Motion to Strike
On January 26, 2012, R.J. Del Vecchio, an expert retained by SSP,
issued a report in which he opined that a majority of the claims of
the '335 and '939 Patents, including the claims asserted by ILT, are
invalid based upon obviousness and/or as anticipated.*fn5
The centerpiece of Del Vecchio's opinions regarding
anticipation and obviousness is U.S. Patent No. 5,019,510, issued by
the PTO to Chou et al. ("Chou Patent"), and describing a method for
promoting the adhesion of a first polymer surface to a second polymer
surface by treating at least one of the polymer
surfaces with water vapor plasma, although the report goes on to cite
additional prior art to support his finding of obviousness. In his
opening report, Del Vecchio opines that Claims 1, 2, 3, 7, 9, 10, 11,
12, 13, 14, 15, 18, 19, 20 and 24 of the '939 Patent and Claims 1, 9,
10, 11, 13, and 14 of the '335 Patent are anticipated by the Chou
Patent and/or obvious in light of that patent, and that claims 2, 3,
4, 5, 6, 7 and 8 of the '939 Patent, and Claims 2, 3, 4, 5, 6, 7, 8,
15, 19, 20, and 21 of the '335 Patent are obvious in light of the Chou
Patent, in combination with other cited prior art.
On March 9, 2012, following disclosure of a report by ILT's patent validity expert, Del Vecchio issued a rebuttal report containing a more comprehensive discussion regarding his invalidity opinions. In that second report, among other things, Del Vecchio outlined the basis for his belief that the references relied upon by him in opining upon invalidity are analogous prior art. Plaintiff now seeks to strike both the opening and rebuttal expert reports of that expert.*fn6
The court's analysis of ILT's motion to strike begins with Rule 26 of the Federal Rules of Civil Procedure, which requires a party to disclose the identity of any witness that may be used at trial to present expert testimony, and for each to provide a written report, prepared and signed by the witness, containing, among other things, "a complete statement of all opinions the witness will express and the basis and reasons for them. . . ."*fn7 Fed. R. Civ. P. 26(a)(2)(A)(i), see Advanced Fiber Techs. Trust v. J & L Fiber Servs., Inc., No. 1:07-CV-1191, 2010 WL 1930569, at *2 (N.D.N.Y. May 11, 2010) (Kahn, J.). In the event of a failure to meet this requirement, "the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless." Fed. R. Civ. P. 37(c)(1).
ILT's motion to strike implicates two issues. The first is whether the disputed reports meet the requirements for introduction of expert testimony at trial. The second concerns whether Del Vecchio's rebuttal report improperly introduced new opinions that were not disclosed in his opening report, and if so whether ILT was thereby prejudiced.
1. Admissibility of Del Vecchio's Opinions The admission of expert testimony in an action pending in a federal court is governed by Rule 702 of the Federal Rules of Evidence, which provides that [a] witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:
(a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and methods; and
(d) the expert has reliably applied the principles and methods to the facts of the case.
Fed. R. Evid. 702. When applying this standard to expert testimony proffered by a party, a trial court is required to perform a gatekeeping function to ensure "that the expert's testimony both rests on a reliable foundation and is relevant to the task at hand." Daubert v. Merrell Down Pharms, Inc., 509 U.S. 579, 597, 113 S. Ct. 2786, 2799 (1993).
As a threshold matter, the trial court must examine the question of whether the challenged opinion evidence can satisfy the requirement of Federal Rule of Evidence 401 that evidence offered at trial be relevant to a controverted claim or defense in the case. Amorgianos v. National R.R. Passenger Corp., 303 F.3d 256, 265 (2d Cir. 2002). If the requisite degree of relevance is found, the court must then proceed to determine whether the expert opinion sought to be admitted has a sufficiently reliable foundation to allow consideration by the factfinder. Id. This latter inquiry is informed by various relevant factors, including whether (1) the theory or technique can be (and has been) tested; (2) it has been subjected to peer review and publication; (3) there is a known or potential rate of error; and (4) the theory or technique has gained a "degree of acceptance within" the pertinent scientific or technical community. Daubert, 509 U.S. at 592-94, 113 S. Ct at 2786. "'General acceptance[,]' [however,] is not a necessary precondition to the admissibility of scientific evidence under the Federal Rules of Evidence, but . . . the trial judge [has] the task of ensuring that an expert's testimony both rests on a reliable foundation and is relevant to the task at hand." Daubert, 509 U.S. at 587, 113 S. Ct. at 2799. Importantly, while both Rule 702 and the Supreme Court's decisions in Daubert, and later in Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 119 S. Ct. 1167 (1999), identify specific factors bearing on the question of reliability, courts have stressed that "the Daubert inquiry is fluid and will necessarily vary from case to case. Amorgianos, 303 F.3d. at 266; see also Daubert, 509 U. S. at 594, 113 S. Ct. 2797.
Rule 702 does not require rejection of opinions based solely upon the court's disagreement with the conclusions reached or the correctness of the opinions offered. Daubert, 509 U.S. at 595, 113 S. Ct. at 2797. Moreover, although in the first instance the burden of establishing the admissibility of expert testimony in question rests with the proponent, any doubts to whether the expert's testimony will be useful should be resolved in favor of admissibility. Lappe v. Am. Honda Motor Co., Inc., 857 F. Supp. 222, 226 (N.D.N.Y. 1994) (Hurd, M.J.).
In its motion, the defendant challenges the opinions offered by expert Del Vecchio regarding invalidity based upon obviousness. The focus of the obviousness inquiry is upon whether the subject matter of the invention as a whole would have been obvious to a person of ordinary skill in the art to which the subject matter pertains at the time of the invention.*fn8
35 U.S.C. § 103(a); see also Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372-73 (Fed. Cir. 2005). When opining on the issue of obviousness, an expert is not required to elaborate extensively on why it would have been obvious for a person of ordinary skill in the relevant art combine elements from prior art sources, since the combination may be the result of mere "common sense." Advanced Fiber Techs. Trust, 2010 WL 1930569, at *4 (citing KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418, 127 S. Ct. 1727 (2007)). To avoid the distorting effects of hindsight, however, a jury must be presented with some evidence as to why a person of ordinary skill in the art would have thought to combine two or more relevant prior references in order to achieve the desired result. Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008); Advanced Fiber Techs. Trust, 2010 WL 1930569, at *4.
In his opening report, Del Vecchio correctly recites the controlling
legal principles regarding anticipation and obviousness, as well as
compliance with 35 U.S.C. § 112, and ILT does not argue otherwise. Del
Vecchio then identifies the prior art upon which he relies in
concluding that certain of the '939 and '335 Patent claims are
anticipated and/or obvious, and describes what a person of ordinary
skill in the art would have
understood at the time of the invention regarding the non-adhesive
bonding of surfaces, including cured rubber and plastic.*fn9
The report goes on to state the basis for concluding that
certain of the patent claims are anticipated and/or obvious, in light
of either the Chou Patent alone or in combination with other prior
Del Vecchio's initial report could well be regarded as suffering to some degree from some of the same deficiencies detected by the Federal Circuit in Innogenetics, in that it lacks a sufficiently detailed analysis to permit a jury to examine obviousness while avoiding the pitfalls of hindsight. Innogenetics, 512 F.3d at 1173. Significantly, the initial Del Vecchio report does not include the requisite analysis in sufficient detail to allow a juror to apply the legal requirements for finding anticipation or obviousness and determine whether or not a person of ordinary skill in the art of the time of the invention would have understood to combine the elements of the cited prior art references to achieve the patented result.
This potential deficiency, however, is significantly overcome when Del Vecchio's opening report is considered in tandem with his rebuttal report. Together, the two reports identify the relevant prior art and discuss the significance of the prior art to the challenges faced by the inventors in applying the principles disclosed in prior art to manufacturing bonded caps, explaining along the way the reasons why Del Vecchio considers the cited prior to be analogous. Whether the factfinder accepts Del Vecchio's opinions, or instead the countering views of ILT's expert, remains to be seen. At this juncture, however, I find no basis under Rule 702 as well as Daubert and its progeny to exclude Del Vecchio's opinions at trial. Advanced Fiber Techs. Trust, 2010 WL 1930569, at *5.
2. Alleged Deficiencies In Del Vecchio Initial Report ILT argues that even if the Del Vecchio reports, when taken together, pass muster under Rule 702 and Daubert, the newly-added rationales for his invalidity opinions, set forth in some detail in his rebuttal report, should have been included in the principal report, thereby making them potentially excludable under Rule 37(c)(1).
An expert report does not meet the requirements of Rule 26(a)(2) if it fails to disclose the basis and reasoning underlying in stated opinions. Fed. R. Civ. P. 26(a)(2)(A)(i); see also Advanced Fiber Techs. Trust, 2010 WL 1930569, at *2 (citing Fed. R. Civ. P. 26). Absent either substantial justification or a finding that the omission is harmless, a failure to comply with this provision should result in exclusion of an expert's report. Fed. R. Civ. P. 37(c)(1); see also Advanced Fiber Techs. Trust, 2010 WL 1930569 at *2. While, by its literal terms, Rule 37(c)(1) appears to be rather stringent in its exclusionary requirements, the Second Circuit has nonetheless softened its impact by outlining certain relevant factors to be considered when determining whether to preclude expert testimony, including (1) the explanation given for failing to comply with the operative discovery order; (2) the importance of the testimony at issue; (3) whether prejudice would suffered by the opposing party in having to respond to the new testimony; and (4) the possibility of a continuance. Softel, Inc. v. Dragon Medical and Scientific Commc'ns, Inc., 118 F.3d 955, 961 (2d Cir. 1997) (citing Outley v. City of New York, 837 F.2d 587, 590-91 (2d Cir. 1988)).
In this instance, I view the question of prejudice to ILT as a pivotal factor. While ILT complains of the lack of specifics in Del Vecchio's initial report, its expert appears to have fully understood Del Vecchio's reasoning for opining on the issues of anticipation and obviousness, and responded to those arguments in his report.*fn10 It should also be noted that after receiving the rebuttal report from Del Vecchio, providing greater detail that was lacking in his opening report, ILT failed to contact the court, prior to taking the expert's deposition, to request appropriate relief. Moreover, when offered the option during oral argument of permitting service of a sur-rebuttal report from its expert, ILT declined. Under these circumstances, I discern no prejudice to the plaintiff stemming from the fact that Del Vecchio included in his reply report a more comprehensive analysis which should rightly have been set forth in his earlier, principal report. See Cooper Notification, Inc. v. Twitter, Inc., No. 09-865-LPS, 2012 WL 2126903, at *11 (D. Del. May 25, 2012) ("[Plaintiff's] silence and inaction after receiving Defendant's rebuttal expert reports undermine any claims by [plaintiff] of prejudice.") (emphasis in original)).
In sum, I find no basis to strike defendants' invalidity expert's initial and rebuttal reports or to preclude his testimony at trial. Instead, the matters raised in ILT's motion can be fully aired through cross- examination and presentment of competing expert testimony in order to assist the jury in deciding the issue of invalidity.
B. Summary Judgment Standard
Summary judgment motions are governed by Rule 56 of the Federal Rules of Civil Procedure. Under that provision, the entry of summary judgment is warranted "if the movant shows that there is no genuine dispute as to any material facts and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a); see Celotex Corp. v. Catrett,477 U.S. 317, 322, 106 S. Ct. 2548, 2552 (1986); Anderson v. Liberty Lobby, Inc.,477 U.S. 242, 247, 106 S. Ct. 2505, 2509-10 (1986); Security Ins. Co. of Hartford v. Old Dominion Freight Line, Inc.,391 F.3d 77, 82-83 (2d Cir. 2004). A fact is "material" for purposes of this inquiry, if it "might affect the outcome of the suit under the governing law." Anderson, 477 U.S. at 248, 106 S. Ct. at 2510; see also Jeffreys v. City of New York, 426 F.3d 549, 553 (2d Cir. ...