Opinion
Civil No. 99-501 (JRT/FLN)
December 21, 2001
Randall T. Skaar, James H. Patterson, and Eric H. Chadwick, PATTERSON, THUENTE, SKAAR CHRISTENSEN, P.A., Minneapolis, MN, for plaintiff.
Edward M. Laine, Mark P. Wine and Cyrus A. Morton, OPPENHEIMER WOLFF DONNELLLY, LLP., Minneapolis, MN, for defendant.
ORDER
This matter is before the Court on three motions arising from the Court's March 31, 2001 Order denying Itron's motion for summary judgment of noninfringement and the first of several motions in limine filed by Itron. Based on the submissions of the parties and the arguments of counsel, the Court makes the following rulings:
1. Itron's May 23, 2001 letter request for reconsideration of the Court's March 31, 2001 order denying plaintiffs motion for summary judgment of noninfringement of the `456 patent [Docket No. 213] is DENIED. Upon review of the reports submitted by Richard Bloomstein, defendant's expert, the Court is satisfied that Bloomstein advanced an equivalence theory of infringement that precludes summary judgment in Itron's favor. See September 22, 2000 Report ("Even if the software portions are limited by the exemplary disclosed flow diagram detail the Itron software code is interchangeable or insubstantially different from the patent disclosed flow charts") (emphasis added).
2. Defendant's motion for clarification on the Court's ruling on claim construction or, in the alternative, for a formal Markman hearing [Docket No. 245] is DENIED. Upon review of the parties' briefs and particularly after listening to oral argument, it became clear to the Court that Benghiat's motion is not one for clarification but rather is a motion for reconsideration of the Court's claim construction. To grant a motion for reconsideration requires a showing of compelling circumstances, which the Court does not find satisfied here. While it may be necessary at some point before or during trial to clarify further which precise steps or portions of the flowcharts and file structures are necessary to perform the function in question, the Court will not construe the claims anew.
3. Itron's motion to strike the May 30, 2001 supplemental declaration of Bloomstein [Docket No. 235] is DENIED. On May 30, 2001, Benghiat served Itron with a supplemental expert report of Richard Bloomstein which, according to Itron, includes for the first time a structural analysis that incorporates the flow charts and file structures as limits on the claims disclosed in the `456 patent. Itron contends that the serving and filing of this supplemental report is untimely and improper under Rule 26(a) of the Federal Rules of Civil Procedure and accordingly moves to strike the report as unduly prejudicial under Rule 37(c). Benghiat argues that the production of a supplemental expert report following the Court's construction of the claims complies with Rule 26(e) and is consistent with Markman practice.
After giving this motion serious consideration, the Court will permit the supplemental report of Bloomstein. Rule 26(e) provides that disclosures, including expert reports, must be supplemented at appropriate intervals and at least 30 days prior to trial in the event the party learns that in some material respect the information disclosed is incomplete or incorrect. Fed.R.Civ.P. 26(e). The Court is also persuaded by Becton Dickinson Co. v. Syntron Bioresearch Inc., No. 97-CI-1634 K, 1998 WL 1032570 (S.D. Cal. Dec. 21, 1998). In Becton, the district court permitted the supplementation of expert reports after the period of discovery had closed and subsequent to the Markman hearing where the plaintiffs supplemental report amending its infringement claims was updated and served within a reasonable time subsequent to the claim construction and a reasonable opportunity was provided to the other party to examine the new opinion. In this case, Benghiat updated the expert testimony within a reasonable time (two months) of the Court's claim construction and provided Itron with an opportunity to depose Bloomstein.
The Court also believes that the local rules are partly to blame for the current situation. In the present case, Itron filed its multiple motions for summary judgment in compliance with the dispositive motion deadline. However, these motions came before the Court without the benefit of the Court having previously performed any construction of the claims, a prerequisite for the Court to rule on the summary judgment motions. Although the Court contacted the parties shortly before the motion hearing and invited the submission of claim construction briefs, the timing of these events resulted in some prejudice to Benghiat and hampered a more coherent approach to claim construction. In the Court's view, changes in the local rules are necessary in order to better accommodate the realities of the Markman motion practice.
For these reasons, the Court finds that the report is permissible. However, in the interests of fairness and to cure any prejudice towards Itron, the Court will grant Itron a reasonable opportunity to depose Mr. Bloomstein and to prepare any supplemental expert report Itron believes is necessary to respond to Bloomstein. The Court will give the parties until May 1, 2002 to complete this additional discovery. No extensions to this deadline will be granted. The parties will then have until July 15, 2002 to revise, if necessary, any of the currently pending motions in limine as well as to submit any additional motions in limine.
To be completely fair, the Court will also give Itron until February 15, 2002 to move the Court for permission to prepare and serve any supplemental expert report it believes is necessary with respect to the hardware claim limitations of the `456 patent as construed by the Court in the March 31, 2001 Order. Should Itron make such a request, the Court will also permit Benghiat an opportunity to depose and respond to any supplemental reports prepared by Itron within the May 1, 2002 deadline set out above.
4. Itron's motion in limine to exclude infringement under the Doctrine of Equivalents [Docket No. 201] is DENIED at this time. In Festo Corp v. Shoketshu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed. Cir. 2000), the Federal Circuit recently changed the law with respect to prosecution history estoppel by holding that "[w]hen a claim amendment creates prosecution history estoppel with regard to a claim amendment, there is no range of equivalence available for the amended claim element." Id. at 569. Leaving no room for ambiguity, the Court further stated: "We hold that prosecution history estoppel acts as a complete bar to the application of the doctrine of equivalence when an amendment has narrowed the scope of a claim for a reason related to patentability." Id. at 574. In light of this holding, Itron claims that because every claim limitation in the `456 patent has been amended so as to narrow the scope of the originally filed claim and such amending was done for reasons of patentability, Festo precludes any range of equivalents under the doctrine of equivalents as a matter of law.
As the parties are well aware and as the Court noted at the motion hearing, the United States Supreme Court has granted a writ of certiorari in Festo. Oral argument is scheduled for January 8, 2002. Given the importance of this decision and its potential impact on this case, the Court believes it best to wait for the Supreme Court's decision, which likely will be issued no later than June 2002. Accordingly, the Court will continue trial for a date certain to be set in September/October 2002. The Court anticipates that this schedule will coordinate well with the extended discovery period the Court has set out above.