Opinion
Civil No. 03-1064 (DWF/RLE)
December 22, 2006, Decided
Bruce E. Black, Esq., David K. Tellekson, Esq., Heather C. Wilde, Esq., James E. Hanft, Esq., Robert L. Jacobson, Esq., Paul H. Beattie, Esq., and Kevin Reiner, Esq., Darby & Darby PC; and Dennis C. Bremer, Esq., and Matthew J. Goggin, Esq., Carlson Caspers Vandenburgh & Lindquist, counsel for Plaintiff and Counter Defendant.
Adam R. Steinert, Esq., Eugene L. Chang, Esq., Gary Serbin, Esq., John M. DiMatteo, Esq., Kimberly May Rosen, Esq., Spyros S. Loukakos, Esq., Steven H. Reisberg, Esq., Willkie Farr & Gallagher LLP; and Lawrence J. Field, Esq., David D. Axtell, Esq., Douglas R. Boettge, Esq., and Harold D. Field, Jr., Esq., Leonard Street and Deinard, PA, counsel for Defendant and Counter Claimant.
AMENDED MEMORANDUM ORDER AND OPINION
On December 22, 2006, the Court docketed an Order granting in part and denying in part Cardiac Science's Motion for Order to Substitute Dr. Michael Kallok for Dr. Stanley Bach, Jr. See Doc. No. 546. That Order contained an omission on page 8. Specifically, the italicized portion of the following sentence was missing: "While the Court recognizes that this limitation will inevitably be the subject of trial objections, including Rule 104 offers of proof and in limine motions, the Court encourages the parties to think of Dr. Bach's testimony as contained in a three-inch electrode pad." Therefore, the Court now vacates the Order contained in Doc. No. 546 and enters the following Amended Order, which is exactly the same as Doc. No. 546 except that it also includes the italicized portion discussed above.
Introduction
This matter came before the Court on December 19, 2006, pursuant to Plaintiff Cardiac Science, Inc.'s ("Cardiac Science") Motion for Order to Substitute Dr. Michael Kallok for Dr. Stanley Bach, Jr. For the reasons set forth below, the Court grants in part and denies in part the motion.
Background
This litigation involves numerous patents owned by Cardiac Science and Defendants Koninklijke Philips Electronics N.V., Philips Electronics North America Corporation, Koninklijke Philips Electronics N.V., and Philips Electronics North America Corporation's (collectively, "Philips") for automatic external defibrillators ("AEDs"). AEDs are portable electronic devices that allow a person with no medical training to administer a defibrillation shock to another person who is in sudden cardiac arrest.
The parties refer to four patents held by Philips--U.S. Patent Nos. 5,879,374, 5,800,460, 5,591,213, and 6,016,059--as the "self-test" patents. Generally, those patents describe an AED that can periodically test itself to ensure that the AED will work properly when needed. According to Cardiac Science, Philips' most commercially important patents in this case are the self-test patents. The present dispute concerns Cardiac Science's expert on the self-test patents. Cardiac Science wishes to substitute Dr. Michael Kallok, who has submitted a proposed expert report on the self-test patents, for Dr. Stanley Bach, Jr., who has already submitted his expert reports on the self-test patents and been deposed. Dr. Kallok has also submitted expert reports about different patents in dispute, and Philips has deposed Dr. Kallok about those reports.
II. Procedural History Relevant to Current Motion
This action was commenced on February 12, 2003. Under the Court's February 4, 2005 Order, the parties were required to exchange a list of the prior art asserted against the claims at issue no later than March 15, 2005. On October 24, 2005, Cardiac Science changed counsel. On October 30, 2005, Cardiac Science retained Dr. Kallok to serve as one of its experts, and on December 29, 2005, it retained Dr. Bach to serve as its expert for the self-test patents. In April 2006, Cardiac Science sought to have Dr. Bach appointed as a non-party expert under the protective order. Cardiac Science argued that Dr. Bach, a recently retired Medtronic employee, was uniquely qualified to render opinions on the self-test patents, and therefore, he needed access to Philips' confidential material. Philips objected, and the Court agreed in its May 8, 2006 Order, concluding that Cardiac Science had not demonstrated how Dr. Bach was different than Cardiac Science's multiple other experts (at least one of which is no longer involved in this litigation) who had been granted access under the protective order to Philips' confidential material.
After the Markman Order and pursuant to the parties' stipulation, on May 11, 2006, the Court entered an amended scheduling order that set the following due dates: expert reports with respect to claims or defenses for each party with the burden of proof due on or before June 12, 2006; responsive expert reports due on or before July 10, 2006; reply expert reports, limited to new matters raised in responsive reports, due on or before August 9, 2006; and dispositive motions filed, briefed, and heard prior to October 17, 2006. ( See Doc. No. 51 and 435.) Dr. Bach submitted his expert report on validity of the self-test patents on June 12, 2006, his rebuttal report on non-infringement on July 10, 2006 (which, without seeking leave of the Court, contained new opinions about why the patents were invalid), and his reply report on invalidity on August 9, 2006. Sometime thereafter, Philips' expert submitted a sur-reply report.
On August 22, 2006, Cardiac Science moved for summary judgment on the issues of invalidity and non-infringement of Claims 8-10 of U.S. Patent No. 6,047,212. On August 24, 2006, Philips moved to amend the scheduling order to extend the dispositive motion deadline, which the Court denied on August 29, 2006. On that same date, Philips filed two motions--one for summary judgment of non-infringement of U.S. Patent No. 6,029,085 and one for summary judgment of non-infringement of the electrode patents. At no time did the parties discuss filing a motion for summary judgment on the self-test patents.
On September 14 and 15, 2006, Philips deposed Dr. Bach. In early October 2006, Dr. Bach contacted Cardiac Science's counsel to tell him that he was unwilling to proceed as an expert. In his termination letter, he explained:
My reason is that I have endured and continue to endure a great amount of stress as a result of recent personal tragedies that have occurred and continue to occur. This stress, coupled with the stress of Expert Report preparation and deposition testimony in this case has become too much to handle and still perform at a level that is acceptable to myself while maintaining some kind of retirement quality of life. It is my understanding that work stress involved in this litigation will escalate further as the trial date approaches and it may very well continue after trial during subsequent legal proceedings.
(Dr. Bach Decl., Ex. B.) Shortly after receiving Dr. Bach's termination letter, Cardiac Science informed Philips of Dr. Bach's withdrawal, offered to make every effort to minimize the potential prejudice to Philips, and informed Philips that it intended to substitute Dr. Kallok for Dr. Bach. On October 13, 2006, the Court conducted a motion hearing on the three summary judgment motions, and, at that time, Cardiac Science informed the Court of the issues concerning Dr. Bach. On November 9, 2006, Cardiac Science submitted Dr. Kallok's proposed expert report on the self-patents to Philips, which includes some opinions and prior art that are different than those contained in Dr. Bach's reports. On that same day, the Court informed that parties that they had a firm trial date in April or May 2007.
When Philips would not stipulate to Dr. Kallok's substitution, Cardiac Science filed a motion for an order to substitute Dr. Kallok for Dr. Bach on November 13, 2006. In that motion, Dr. Bach, a 63-year-old man, states that his personal tragedies involve the brutal death of his father in 2004, his mother's diagnosis of Alzheimer's-related dementia in 2005, and sometime more recently the death of his mother-in-law. ( Id., PP 5, 7.) He also explains that his pre-existing vision and other health problems have begun to worsen in the last few years. ( Id., P 4.) He describes himself as a deliberate and methodical thinker, who does not respond well in an adversarial setting, and he complains about how attorneys treat scientists. ( Id. PP 8-10.)
On December 11, 2006, the Court issued its Order on the summary judgment motions. Four days later, the parties agreed to begin the 16-day trial on April 23, 2007.
Discussion
The parties acknowledge that there is a dearth of cases discussing situations similar to the present dispute and that this procedural issue is governed by Eighth Circuit law, as opposed to Federal Circuit law. In essence, the parties agree that the Federal Rules of Civil Procedure permit a court, in its discretion, to exclude untimely expert opinions unless the failure to disclose was either harmless or substantially justified. Trost v. Trek Bicycle Corp., 162 F.3d 1004, 1008 (8th Cir. 1998); see also Citizens Bank of Batesville v. Ford Motor Co., 16 F.3d 965, 966 (8th Cir. 1994) (using a four-part test).
Cardiac Science states that it did not act in bad faith and asserts that the substitution is substantially justified based on Dr. Bach's inability to continue in the litigation. It argues that Philips would not be prejudiced by the substitution because Philips would have more than enough time to depose Dr. Kallok and prepare for his testimony at trial, given that there are over four months until trial. In a footnote, it mentions that Dr. Kallok has "adopted the essence of" Dr. Bach's opinions and that Dr. Kallok's modifications "do not significantly change the substantive opinions" offered by Dr. Bach. (Cardiac Science Mem. at 3, n.2.) Further, it argues that Dr. Kallok should not be constrained to simply adopt another expert's opinions ipsissima verba. ( Id. at 12, n.5.) Finally, Cardiac Science offers to pay the court reporting fees for Dr. Kallok to be deposed for one day in New York.
In response, Philips is sympathetic to Dr. Bach's personal issues. It points out, however, that most of his personal tragedies occurred prior to his retention by Cardiac Science and that it is highly unlikely that Cardiac Science did not know about Dr. Bach's personal history. Philips is therefore appropriately suspect of Cardiac Science's motivation for the substitution. Relying on Dunkin' Donuts, Inc. v. N.A.S.T., Inc., Civ. No. 02-C-1272, 2005 U.S. Dist. LEXIS 16703 (N.D. Ill. Aug. 10, 2005), Philips explains that it does not object to the substitution as long as Dr. Kallok's report and testimony are in strict conformity with Dr. Bach's analysis and conclusions. In its memorandum, it provides charts to show how Dr. Kallok's testimony differs from Dr. Bach's and how some of Dr. Bach's opinions on invalidity were improperly contained in Dr. Bach's rebuttal report on non-infringement. Moreover, Philips shows how both Dr. Bach and Dr. Kallok improperly rely on prior art references that were not disclosed prior to the March 15, 2005 deadline.
Philips provided additional and helpful examples at the motion hearing.
If the Court does allow the substitution and does not require Dr. Kallok to testify in strict conformity to Dr. Bach, at a minimum Philips requests the following: (1) limiting Dr. Kallok to Dr. Bach's timely invalidity opinions in Dr. Bach's opening report; (2) holding Dr. Kallok to Dr. Bach's concessions during his deposition; (3) permitting Philips to file for summary judgment based on Dr. Bach's testimony; and (4) compensating Philips for any fees and costs associated with responding to and deposing Dr. Kallok, including any necessary supplemental reports by Philips' expert witnesses. (Philips' Mem. at 2.)
After considering the parties' arguments, the flexibility allowed under the discovery rules and this circuit's law, the Court in its discretion will allow Cardiac Science to substitute Dr. Kallok for Dr. Bach because the substitution is substantially justified. To minimize the inevitable prejudice to Philips caused by the substitution, the Court will limit the substitution in the following manner.
First, Dr. Kallok may not testify in any manner that is contrary to or inconsistent with Dr. Bach. While the Court recognizes that this limitation will inevitably be the subject of trial objections, including Rule 104 offers of proof and in limine motions, the Court encourages the parties to think of Dr. Bach's testimony as contained in a three-inch electrode pad. Dr. Kallok's testimony must also fit into that pad; his testimony cannot enlarge the pad into a four-inch electrode pad. Dr. Kallok's analysis can be different than Dr. Bach's, but he must reach the same conclusions as Dr. Bach did. Second, Dr. Kallok's invalidity opinions must also be limited to the opinions properly disclosed in Dr. Bach's opening expert report; opinions concerning invalidity raised in his rebuttal non-infringement report are excluded. Third, with respect to prior art, Dr. Kallok may only testify with respect to prior art that was properly disclosed by the March 15, 2005 deadline and included in Dr. Bach's opening expert report. Fourth, Cardiac Science shall submit a revised report of Dr. Kallok that is consistent with this Order.
Fifth, if Philips wishes, it may depose Dr. Kallok for up to two days at a location it chooses. Cardiac Science shall pay for the court reporter fees incurred during the deposition, travel costs (if any), and the attorney fees incurred preparing for and taking Dr. Kallok's deposition. The parties shall agree to a schedule for Dr. Kallok's revised report and deposition, if any. Sixth, Dr. Bach's deposition testimony may be used for impeachment purposes at trial consistent with the Federal Rules of Evidence.
The Court declines to require Cardiac Science to pay for any supplement expert report prepared by Philips. Given the Court's limitations on the substitution and because the reports will not be used at trial, except perhaps for Rule 1006 purposes, the Court does not believe a supplemental report is necessary. If Philips wishes to submit one, it may do so at its own cost.
The Court declines to allow Philips to file a summary judgment motion based on Dr. Bach's testimony because, but for Dr. Bach's substitution, such a motion would have been untimely. The Court, however, encourages Cardiac Science to withdraw those claims that would have been likely granted as a result of Philips' motion. Doing so will allow Cardiac Science to avoid the real possibility of a directed verdict at trial.
Conclusion
According to Dr. Bach, "[a] new expert should have no trouble adopting, supporting, and standing by my opinions." (Dr. Bach. Decl. P 10.) Given this, the result reached today minimizes the prejudice to both parties as a result of Dr. Bach's unwillingness to (or Cardiac Science's unwillingness to have him) continue as an expert in this case. As discussed at the motion hearing, the parties must work together to ensure that this case is presented to the jury in the time allowed. Neither party benefits from having the jury empanelled longer than expected. The Court therefore urges Cardiac Science to strictly abide by the limitations outlined in this Order in order to minimize objections and sidebars at trial, which will inevitably lengthen the trial.
For the reasons stated above, IT IS HEREBY ORDERED THAT:
1. Cardiac Science's Motion for Order to Substitute Dr. Michael Kallok for Dr. Stanley Bach, Jr. (Doc. No. 533) is GRANTED IN PART and DENIED IN PART, as discussed above.
Dated: December 22, 2006
s/ Donovan W. Frank
Judge of United States District Court