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.
Michael Kogan, regarding Google's recapture defense under
35 U.S.C. § 251. See Dkt. 156. Specifically,
Plaintiffs seek to exclude the opinion concerning whether the
inventors of the reissued patents-in-suit sought reissue
claims for overlooked aspects described in the original
patent. See Dkt. 148 (Google's motion for
summary judgment on recapture). According to Plaintiffs, this
opinion was not disclosed in a timely manner. Plaintiffs'
motion is DENIED for the following
August 12, 2016, Google served the invalidity report of Dr.
Kogan, which opined that certain asserted claims violate the
recapture rule under § 251. Dkt. 168-4 (Kogan Invalidity
Report) ¶¶ 117-51. On September 14, 2016,
Plaintiffs served the rebuttal validity report of Professor
Buster Dunsmore that, in addition to addressing Dr.
Kogan's opinions on recapture, argued that the claims at
issue do not trigger the recapture test because the claims
are directed to previously unidentified, overlooked aspects
of the invention. 168-2 (Dunsmore Report) ¶¶
September 29, 2016, deposition, Dr. Kogan addressed Professor
Dunsmore's rebuttal opinions on overlooked aspects:
Q. . . . [A]re there any opinions that you have relevant in
this case that you believe are not currently expressed in
A. Yes, I do have one opinion that is in rebuttal to Dr.
Dunsmore's rebuttal report with respect to the overlooked
aspects as they relate to surrender discussion. I'd like
to render my opinion on that.
Q. Okay. I actually have questions about that, so I'm not
going to --I'm not blowing you off at this moment. I
promise to ask you about it a little bit later.
Ex. 168-3 (Kogan Dep.) at 7:20-8:5. Dr. Kogan later explained
in detail why the two alleged overlooked aspects Professor
Dunsmore identified were encompassed by the original claims
of the '247 patent, were incidental features of the
claimed invention, and thus were not overlooked. Id.
considers four factors in determining whether a Rule 26
violation, such as an alleged late discovery disclosure, is
justified or harmless: (1) the party's explanation, if
any, for its failure to disclose the information in a timely
manner; (2) the prejudice to the opposing party if the
evidence is admitted; (3) the possibility of curing such
prejudice by granting a continuance; and (4) the importance
of the evidence. See Tex. A & M Research Found. v.
Magna Transp. Inc., 338 F.3d 394, 402 (5th Cir. 2003).
initial matter, the Court does not consider Dr. Kogan's
response regarding overlooked aspects within the scope of
information required under Rule 26, at least not in the
context of Google's recapture defense. Dr. Kogan's
report describes the “complete statement” of his
opinions regarding the three elements of Google's
recapture defense. See Fed. R. Civ. P.
26(a)(2)(B)(i); Dkt. 168-4 ¶¶ 29-32, 117-51.
Whether reissued claims are directed to overlooked aspects is
“a separate inquiry under reissue that is independent
of whether or not the recapture rule applies.” In
re Youman, 679 F.3d 1335, 1347 (Fed. Cir. 2012). It was
Plaintiffs' rebuttal to Google's recapture defense
raised for the first time in their expert report that
prompted Dr. Kogan's response.
Dr. Kogan's opinions were untimely or in violation of
Rule 26, exclusion of Dr. Kogan's opinions would not be
warranted. With respect to the first factor relevant to
whether a discovery violation is harmless, Google's
explanation for the allegedly-late opinion is that the
overlooked aspects issue was first raised in Plaintiffs'
rebuttal expert report. Because Dr. Kogan was responding to
new arguments by the Plaintiffs, exclusion is not warranted.
See Perdiemco, LLC v. Industrack LLC, Case No.
2:15-CV-00727-JRG-RSP, Dkt. 259 at 3-4 (E.D. Tex. Oct. 24,
2016); ZiiLabs Inc. v. Samsung Electronics Co., Case
No.2:14-cv-203-JRG-RSP, 2015 WL 6690403, at *2 (E.D. Tex.
Nov. 2, 2015).
respect to the second factor, the prejudice to Plaintiffs is
minimal. Dr. Kogan's opinions concerning recapture are
based purely on the original and reissued claims and the
intrinsic record of the patents-in-suit, all of which is
information Plaintiffs have known about since the inception
the case. Dr. Kogan's rebuttal opinion is not based on
new data or testing. In addition, Plaintiffs were given two
days to depose Dr. Kogan about his opinion and learned during
Dr. Kogan's deposition about the substance of his
response to the rebuttal expert report. Since that time,
Plaintiffs will have had ...