Opinion
Civ. File No. 99-749 (PAM/JGL).
March 14, 2001.
MEMORANDUM AND ORDER
This matter is before the Court on two Motions in Limine filed by Plaintiff PUR Water Purification Products ("PUR") and one Motion in Limine filed by Defendant Brita Products Company ("Brita"). For the reasons that follow, the Motions in Limine are denied.
BACKGROUND
This case involves a patent, U.S. Patent No. 5,882,507 (the "`507 patent"), held by PUR, which covers a filter replacement indicator ("FRI") for a filter cartridge in a gravity-fed water filter pitcher or carafe. The parties have resolved most of the issues in the case. The only issue remaining for trial is whether Brita's FRI operates via buoyancy, and thereby infringes PUR's patented FRI.
DISCUSSION
A. PUR's Motion to Exclude the Testimony of Professor Savas
PUR contends that the Court should exclude the testimony of one of Brita's infringement experts, Professor Omer Savas of Berkeley, because Brita identified him and submitted his expert report well beyond the deadline for doing so. The parties agreed that they would submit expert reports on September 8, 2000, and rebuttal expert reports on October 16, 2000. Brita admits that it did not disclose Prof. Savas's testimony to PUR until December 18, 2000.
PUR argues that Prof. Savas should be excluded under Fed.R.Civ.P. 37(c)(1). Rule 37 states that a party shall not use at trial information it failed to disclose, unless the party had substantial justification for the failure to disclose, and unless such failure is harmless. The Eighth Circuit has set forth a four factors that the Court should consider in determining whether a failure to disclose had substantial justification or was harmless. These factors are: (1) the importance of the excluded material; (2) the explanation of the party for the failure to comply with the disclosure rules; (3) the potential prejudice from allowing the material to be used at trial; and (4) the availability of a continuance to cure such prejudice. Citizens Bank v. Ford Motor Co., 16 F.3d 965, 966 (8th Cir. 1994).
PUR argues that Brita has no explanation for the failure to disclose Prof. Savas's testimony, and that his testimony duplicates that of Brita's other expert witness. Further, PUR contends that the testimony is not important, and that PUR will be prejudiced by allowing the testimony because there is "scant" time in which to depose Prof. Savas.
Brita asserts that PUR seeks to exclude Prof. Savas's testimony only because PUR knows that this testimony will defeat the testimony of PUR's expert witness. According to Brita, PUR served a supplemental expert report of its expert witness on December 6, 2000. This report described for the first time an actual physical experiment by a PUR infringement expert. Thus, Brita's submission of Prof. Savas's testimony on December 18 was an effort to respond to the late submission by PUR.
Turning to the Citizens Bank factors, Brita has offered a reasonable explanation for its failure to disclose Prof. Savas earlier. Further, it appears that Brita's disclosure was not as untimely as PUR makes it out to be. Moreover, the testimony is clearly important. Prof. Savas's report concerns how the diaphragm in Brita's FRI works. He is the only expert who performed experiments directly on Brita's FRI. These experiments apparently concluded that the diaphragm moves because of pressure differential, not buoyancy. Because the only issue remaining for trial is whether Brita's FRI operates via buoyancy, Prof. Savas's testimony bears on the ultimate issue in the case. Finally, PUR has time before trial to depose Prof. Savas and prepare to rebut his testimony. Brita has shown that it has substantial justification for the failure to disclose Prof. Savas's testimony, and that the failure was harmless. Therefore, the Court will allow Prof. Savas to testify.
B. PUR's Motion to Exclude Evidence of Brita's Huang Patent
PUR seeks to exclude evidence of Brita's Huang patent as irrelevant to the issue of whether Brita's device embodying the Huang patent infringes PUR's `507 patent. The Huang patent was issued over PUR's `394 (Lund) patent, but not over the `507 patent, which had not been issued at the time Huang issued.
Brita claims that evidence of the Huang patent is relevant, though not dispositive, on the issue of infringement remaining to be tried. That issue is whether Brita's device operates via buoyancy, in other words, whether Brita's device contains a de facto float, as PUR's device does. The Patent and Trademark Office ("PTO") allowed the Huang patent over the `394, "for recitations . . . of a `diaphragm,'" presumably as opposed to a float. The `507 patent contains the same float as the `394 patent, and thus Brita seeks to draw an inference that the Huang patent is distinct from the `507 patent under the doctrine of equivalents. PUR asks the Court to exclude this evidence for several reasons. First, PUR claims that this is a new theory not previously disclosed. However, Brita's discovery responses made clear that Brita would rely on the prosecution history of the Huang patent, which would include the statements that Huang could issue over the `394 patent. Brita may not have articulated this theory with specificity, but the theory was clearly implied.
PUR also contends that Brita may not, as a matter of law, draw the inference it seeks to draw. According to PUR, had the Huang patent issued over the `507 patent, then such issuance would be relevant. The argument seems to be that Brita's argument has too many links: Huang was found different from `394, which is the same as `507, thus Huang is different from `507. However, the tenuous nature of Brita's argument goes to the weight to be accorded the evidence of the Huang patent, and not to its admissibility. Brita will be allowed to present evidence of the Huang patent.
C. Brita's Motion to Exclude Evidence of the Trapped Air Bubble
Brita seeks to prevent PUR from arguing that the air bubble trapped beneath the diaphragm of Brita's FRI constitutes part of the "float" that allegedly infringes PUR's FRI float. Brita contends that the trapped-air-bubble theory is a new theory not previously disclosed, and that it is, in any event, contrary to this Court's construction of the patent in suit.
Brita's arguments in this regard are difficult to follow. It is not true, as Brita represents, that PUR has never mentioned the trapped air bubble to be part of what is alleged to infringe PUR's patent. Thus, PUR's argument cannot be excluded on that ground. Moreover, the Court's construction of the "float" in the patent in suit does not preclude an argument that Brita's "float" includes the diaphragm and the air trapped beneath it. Brita's Motion is denied.
CONCLUSION
Accordingly, for the foregoing reasons, and upon all of the files, records, and proceedings herein,
IT IS HEREBY ORDERED that:
1. Plaintiff PUR Water Purification Product's Motions in Limine (Clerk Doc. No. 111) are DENIED;
2. Defendant Brita Products Company's Motion in Limine (Clerk Doc. No. 107) is DENIED; and
3. Defendant shall make its expert witness, Professor Omer Savas, available for deposition prior to the trial in this matter.