These challenges are reviewed under the precedent of the pertinent regional circuit, the Fourth Circuit in this case. Wexell v. Komar Indus., Inc., 18 F.3d 916, 919, 29 USPQ2d 2017, 2019 (Fed. Cir. 1994) ("This court applies the law of the pertinent regional circuit when the precise issue to be addressed involves an interpretation of the Federal Rules of Civil Procedure."). Under Fourth Circuit law, TEA's assertions are wholly without merit. Rule 39(a) specifically directs the court not to use a jury, even when a jury has been requested, if "the court . . . finds that a right of trial by jury . . . does not exist."
The imposition of sanctions for misconduct during discovery is not unique to this court's jurisdiction. See, e.g., Wexell v. Komar Indus., Inc., 18 F.3d 916, 919, 29 USPQ2d 2017, 2020 (Fed. Cir. 1994) (reviewing discovery sanctions under Sixth Circuit standards); Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1362, 13 USPQ2d 1967, 1970 (Fed. Cir. 1990) (same). Accordingly, this court applies the law of the pertinent regional circuit, in this case the United States Court of Appeals for the Sixth Circuit. See Pro-Mold Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574, 37 USPQ2d 1626, 1631 (Fed. Cir. 1996).
Because this case presents a procedural question not unique to patent law, this court follows the law of the regional circuit from which the case is appealed. See Wexell v. Komar Indus., Inc., 18 F.3d 916, 919, 29 USPQ2d 2017, 2019 (Fed. Cir. 1994); Amstar Corp. v. Envirotech Corp., 823 F.2d 1538, 1550, 3 USPQ2d 1412, 1421 (Fed. Cir. 1987). The Ninth Circuit has held:
The court further ruled that the expert's affidavit which incorporated the new opinions should likewise be stricken as inadmissible. When reviewing the application of the Federal Rules of Civil Procedure, this court generally applies the law of the applicable regional circuit, which in this case is the Fifth Circuit. See Wexell v. Komar Indus., Inc., 18 F.3d 916, 919, 29 USPQ2d 2017, 2019 (Fed. Cir. 1994). The Fifth Circuit in turn reviews the exclusion of expert testimony for failure to comply with a scheduling order under an abuse of discretion standard.
Although the substantive law of the Federal Circuit applies to the patent issues in this case, the Court applies the Seventh Circuit precedent to procedural issues not unique to patent law. See Vanguard Research, Inc. v. PEAT, Inc., 304 F.3d 1249, 1254 (Fed. Cir. 2002); Wexell v. Komar Indus., Inc., 18 F.3d 916, 919 (Fed. Cir. 1994). Although the Court does not ultimately rely on the Wang Declaration in its determination that the '845 Patent is invalid for indefiniteness, the discussion of the issues it presents provides an understanding of the evidentiary landscape with which the Court dealt.
Moreover, despite the dominant role of the Federal Circuit in developing the law in patent cases, the decision whether to bifurcate damage proceedings is determined by the law of the circuit in which the district court is located. See, e.g., Medtronic Xomed, Inc. v. Gyrus ENT LLC, 440 F. Supp. 2d 1333, 1335 (M.D. Fla. 2006) ("[b]ecause bifurcation of liability and damages is not unique to patent law, the law of the Eleventh Circuit applies to this issue") (citing Wexell v. Komar Industries, Inc., 18 F.3d 916, 919 (Fed. Cir. 1994) ("[t]his court applies the law of the pertinent regional circuit when the precise issue to be addressed involves an interpretation of the Federal Rules of Civil Procedure")). The prevailing view in the Second Circuit still seems to be that bifurcation of damages in patent cases is "the exception, not the rule."
The Court applies Seventh Circuit precedent to the latter. See id.; Wexell v. Komar Indus., Inc., 18 F.3d 916, 919 (Fed. Cir. 1994). The primary rationale for excluding untimely expert opinions is to avoid an unfair "ambush" in which a party advances new theories or evidence to which its opponent has insufficient time to formulate a response.
B. Applicable Law The law of the regional circuit applies to this discovery dispute, because the issues are "not unique to the Federal Circuit's exclusive assignment." Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1467 (Fed. Cir. 1997); see, e.g., Hockerson-Halberstadt, Inc. v. Propet USA, Inc., 62 F.App'x 322, 334-35 (Fed. Cir. 2003) (applying law of regional circuit to Rule 26) (citing Wexell v. Komar Indus., Inc., 18 F.3d 916, 919 (Fed. Cir. 1994)). C. Analysis
The law of the regional circuit applies to this discovery dispute, because the issues are "not unique to the Federal Circuit's exclusive assignment." Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1467 (Fed. Cir. 1997); see, e.g., Hockerson-Halberstadt, Inc. v. Propet USA, Inc., 62 F.App'x 322, 334-35 (Fed. Cir. 2003) (applying law of regional circuit to Rule 26) (citing Wexell v. Komar Indus., Inc., 18 F.3d 916, 919 (Fed. Cir. 1994)). As Joyner rightly points out in the Motion, Sommer's Report does not comply with Rule 26(a)(2).
Because bifurcation of liability and damages is not unique to patent law, the law of the Eleventh Circuit applies to this issue. See Wexell v. Komar Industries, Inc., 18 F.3d 916, 919 (Fed. Cir. 1994) ("[t]his court applies the law of the pertinent regional circuit when the precise issue to be addressed involves an interpretation of the Federal Rules of Civil Procedure"). Consistent with the Federal Circuit, the Eleventh Circuit recognizes that Rule 42(b) "confers broad discretion on the district court in this area, permitting bifurcation merely `in furtherance of convenience.'"