Summary
following Thomson in ruling on motion to reconsider opinion following Finnigan
Summary of this case from Engate, Inc. v. Esquire Deposition Services, L.L.C.Opinion
Civil File No. 98-2294 (MJD/JGL)
November 20, 2002
Douglas J. Williams and Matthew J. Goggin, Merchant Gould, for Plaintiff.
Russell J. Barron and Joan L. Eads, Foley Lardner, and James T. Nikolai, Nikolai Mersereau, P.A., for Defendants.
ORDER
This matter is before the Court upon Defendant's motion for reconsideration of this Court's Order that granted Plaintiff's motion to exclude uncorroborated testimony regarding prior art and prior public sale or use. This Order was issued orally, from the bench, and was based primarily on Finnigan v. International Trade Commission, 180 F.3d 1354, 1365 (Fed. Cir. 1999). Defendant moves for reconsideration on four grounds: that this case is factually distinguishable; Finnigan doesn't apply to testimony regarding the general knowledge of one of ordinary skill in the art; corroboration is unnecessary where the testimony is from a disinterested witness; and the physical evidence takes the testimony of Dr. Hogsette and Mr. Washington outside of the corroboration rule.
Background
Defendant has identified two witnesses that will testify concerning a "clamp trap"; a clamp light where the inside of the aluminum shade was painted with a liquid adhesive. Defendant asserts that Dr. Hogsette would testify that he personally observed the use of the clamp trap as early as 1974, and that he observed the use of this trap and prepared it for use while studying at the University of Florida. Defendant further asserts that Dr. Hogsette's testimony will be corroborated by the testimony of Frank Washington, an employee at the U.S. Department of Agriculture lab in Gainesville, Florida. Mr. Washington will testify that as early as 1966, he had seen and worked with the clamp trap. In addition, the oral testimony will be supported by Dr. Hogsette's expert report, and an example of a clamp light.
Analysis
Defendant relies on Thomson S.A. v. Quixote Corp., 166 F.3d 1172 (Fed. Cir. 1999) to support its position that the testimony of Dr. Hogsette and Mr. Washington is sufficiently corroborated. Thomson was discussed by the court in Finnigan, but it was not overruled.
In discussing its holding that corroboration is required even for disinterested witnesses, the court noted that Thomson was not to the contrary. It found that based on the facts present in Thomson, the opinion addressed the sufficiency of the corroborating evidence "a distinct inquiry involving as assessment of the totality of the circumstances, including consideration of `the interest of the subject matter of the suit." Id. at 1368-1369.
In Eisenberg v. Alimed, Inc., 243 F.3d 555 (Fed. Cir. 2000), the Federal Circuit, citing to Thomson, held that the rule requiring corroboration was not applicable to the testimony of a disinterested witness testifying to her prior use of a splint that contained every limitation contained in the patent claims at issue.
As Thomson remains good law in the Federal Circuit, and based on its application in Eisenberg, the Court finds that its prior order excluding the testimony of Dr. Hogsette and Mr. Washington was in error. The Court finds that the testimony of Dr. Hogsette and Mr. Washington concerning the clamp trap is sufficiently corroborated.
Accordingly,
IT IS HEREBY ORDERED that Defendant's Motion for Reconsideration of this Court's Order granting Plaintiff's Motion to Exclude Uncorroborated Testimony Regarding Prior Art and Prior Public Use or Sale is GRANTED.