United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
PAYNE UNITED STATES MAGISTRATE JUDGE
move to exclude the opinion of Google's expert, Dr.
William Arbaugh, regarding whether the
“GreenBorder” prior art system anticipates or
renders the asserted claims obvious for two reasons: first,
because documents regarding the GreenBorder system were
allegedly produced too late during discovery; and second,
because Dr. Arbaugh's discussion of the GreenBorder
system is not specific enough. Dkt. 155. Plaintiffs'
motion is DENIED for the following reasons.
Rule of Civil Procedure 26 requires “a complete
statement of all opinions the witness will express and the
basis and reasons for them.” Fed.R.Civ.P.
26(a)(2)(B)(i). “If a party fails to provide
information . . . as required by Rule 26(a) . . ., the party
is not allowed to use that information . . . at a trial,
unless the failure was substantially justified or is
harmless.” Fed.R.Civ.P. 37(c)(1). “In determining
whether violation of Rule 26 requiring disclosure of evidence
is harmless, such that the evidence may be used at trial
despite non-disclosure, the trial court's discretion is
to be guided by the consideration of four factors: (1) the
importance of the evidence or witness' testimony; (2) the
prejudice to the opposing party of allowing the evidence in;
(3) the possibility of curing such prejudice by granting a
continuance; and (4) the explanation, if any, for the
party's failure to identify the witness or
evidence.” Texas Instruments, Inc. v. Hyundai
Elecs. Am., Inc., 50 F.Supp.2d 619, 621 (E.D. Tex. 1999)
raise two grounds for excluding Dr. Arbaugh's opinion
regarding the GreenBorder system. See Dkt. 155 at
4-5. First, Plaintiffs contend that Google “waited
until the end of fact discovery to disclose the GreenBorder
documents.” Id. at 4. Second, Plaintiffs
contend that Dr. Arbaugh “provides no specific
citations to any specific portion of the GreenBorder
documents and no explanation of how the GreenBorder system or
the GreenBorder documents disclose the asserted claim
limitations.” Id. at 5.
Court does not agree. With respect to Plaintiffs'
complaint about the timeliness of Google's production of
the GreenBorder documents, Google explains that it began
producing GreenBorder documents in March 2014. Dkt. 184 at 3.
Google's production was not complete until August 2016,
but this case was stayed from November 2014 to July 2016.
See Id. In addition, Plaintiffs do not clearly
explain how Google's alleged untimeliness forms a basis
for excluding Dr. Arbaugh's opinion. Google produced the
GreenBorder documents before the close of fact-discovery
shortly after the stay was lifted. Plaintiffs cite no
authority for the proposition that timely-produced documents
give rise to the kind of prejudice required by Rule 37(c)(1).
respect to Plaintiffs' second argument about the
specificity of Dr. Arbaugh's opinion, the Court finds Dr.
Arbaugh's report sufficient. The parties' primary
dispute is about whether Dr. Arbaugh's discussion of a
related reference, the Joshi patent, is sufficiently linked
to the GreenBorder system to provide enough detail about the
prior art system. But Rule 26 is not so demanding.
“[T]he purpose of the reports is to avoid the
disclosure of ‘sketchy and vague' expert
information.” Sierra Club, Lone Star Chapter v.
Cedar Point Oil Co. Inc., 73 F.3d 546, 571 (5th Cir.
1996) (quoting Fed.R.Civ.P. Committee Notes); see also
Meyers v. Nat'l R.R. Passenger Corp. (Amtrak), 619
F.3d 729, 734 (7th Cir. 2010) (“The purpose of the
report is to provide adequate notice of the substance of the
expert's forthcoming testimony and to give the opposing
party time to prepare for a response.”); Meyer
Intellectual Properties Ltd. v. Bodum, Inc., 690 F.3d
1354, 1374-75 (Fed. Cir. 2012). Dr. Arbaugh's report
provides sufficient notice to Plaintiffs regarding the
substance of his potential testimony, and by the start of
trial Plaintiffs will have had almost five months to prepare
for any such testimony.
assuming a more demanding standard, Dr. Arbaugh's report
is adequate. Dr. Arbaugh explains that the inventors of the
Joshi patent “also developed a working prior art system
called GreenBorder based on the technology described in the
Joshi patent.” Dkt. 167-10 at 27. Dr. Arbaugh then
describes technical details about both Joshi patent and the
GreenBorder system and opines that the GreenBorder system
anticipates or renders the asserted claims obvious-on an
element-by-element basis. See, e.g., id. at
56 (“The GreenBorder system also included this
limitation.”). Dr. Arbaugh's report therefore
complies with Rule 26.
the Court finds that Dr. Arbaugh's report, including his
reliance on GreenBorder documents produced in August 2016,
does not violate Rule 26, there is no basis the exclude Dr.
Arbaugh's opinion under Rule 37(c)(1). Plaintiffs'
motion (Dkt. 155) is therefore DENIED.
 Plaintiffs opening brief also seeks to
exclude two additional opinions of Dr. Arbaugh, but pursuant
to a subsequent agreement by the parties (see Dkt.
165), the dispute was narrowed to only the GreenBorder
system. See Dkt. 167 at 1. Any additional relief
requested in ...