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Pulse Engineering, Inc. v. Defendant's Extrinsic Mascon

February 3, 2009

PULSE ENGINEERING, INC., A DELAWARE CORPORATION, PLAINTIFF,
v.
DEFENDANT'S EXTRINSIC MASCON, INC. DBA ATW SECURITY, A MASSACHUSETTS CORPORATION, DOC. NOS. 23 AND 25 DEFENDANT.



The opinion of the court was delivered by: Hon. Jeffrey T. Miller United States District Judge

ORDER DENYING PLAINTIFF'S EVIDENCE AND ALTERNATE CLAIM CONSTRUCTION MOTION TO EXCLUDE

Plaintiff Pulse Engineering, Inc. ("Pulse") filed this action on April 1, 2008, alleging infringement of two patents by Defendant Mascon, Inc. ("Mascon"). (Doc. No. 1.) Mascon counter-claimed for declaratory relief of non-infringement and patent invalidity. (Doc. No. 4.) On August 27, 2008, Magistrate Judge Anthony J. Battaglia issued a Claims Construction Scheduling Order ("Scheduling Order"), detailing the disclosure obligations of the parties in anticipation of a Claims Construction Hearing on February 23, 2009. Pending before the court is Pulse's motion to exclude from the claims construction proceedings certain items of Mascon extrinsic evidence and an alternate claim construction. (Doc. Nos. 23 and 25.) Mascon submitted an opposition to the motion (Doc. No. 26) and Pulse filed a timely reply (Doc. No. 28). The matter was taken under submission by the court pursuant to Civil L.R. 7.1(d) on January 16, 2009.

I. Background

Pursuant to Patent L.R. 4 and the Scheduling Order, the parties were ordered to "simultaneously exchange a preliminary proposed construction of each claim term, phrase, or clause" identified by the parties on or before November 12, 2008. (Doc. No. 14 at 4:16-18.) The parties were also required to "provide a preliminary identification of extrinsic evidence" and "identify each such item of extrinsic evidence by production number or produce a copy" thereof. (Doc. No. 14 at 4:22-26.) Further, the parties were to "provide a brief description" of any proposed testimony from percipient or expert witnesses. (Doc. No. 14 at 4:23-24, 26-27.) Separately, the order required the parties to prepare a Joint Claim Construction Chart, Worksheet, and Hearing Statement to file on or before December 10, 2008. (Doc. No. 14 at 5.) In those documents, the parties were again to identify supporting extrinsic evidence, and for any proposed expert witness, to provide "a summary of each opinion to be offered in sufficient detail to permit a meaningful deposition of that expert." (Doc. No. 15 at 6.)

In its Proposed Claim Construction, Mascon offered a list of ten literature references as supporting extrinsic evidence. No specific pages were identified for any of the ten references, and for most, only copies of title and bibliography pages were produced. (Doc. No. 25 at ¶ 3; Decl., Exh. A-1.) Mascon only produced content from publications by Horowitz and Hill (pages 30-32 and 654-656),*fn1 Zverev (pages 1-30),*fn2 and Newton (pages 454 and 623).*fn3

As part of its contribution to the Joint Claim Construction documents, Mascon again listed the references by Horowitz (now citing to the entire book but producing nothing new), Zverev (citing pages 1-22 only), and Newton. Mascon also reiterated a citation to Van Valkenberg (but produced only the title and bibliography pages)*fn4 and added a previously undisclosed citation to Ruston and Bordogna.*fn5 (Doc. No. 25 at 5-6; Decl. of Kristopher L. Reed ("Decl."), Exh. A-1; Doc. No. 28 at 4.) No part of the Ruston reference was submitted to Pulse. (Doc. No. 25 at 4.)

In the Preliminary Claim Construction provided to Pulse on November 12, 2008, Mascon identified an expert witness, Professor Acampora, to give supporting extrinsic evidence. (Doc. No. 22-2 at 2.) For each patent term on which the expert is to opine, Mascon disclosed simply that the witness "may testify concerning the meaning of the term to one of skill in the art in the context of the '347 patent," one of the two patents at issue. For the later-prepared Joint Claim Construction documents, Mascon did provide a more detailed description of the expert's proposed testimony; Pulse makes no objection to these later disclosures. (See Doc. Nos. 20-2 and 22-2, throughout.)

On November 17, 2008, Pulse sent a letter to Mascon identifying the perceived deficiencies in the November 12 disclosures and asking Mascon to cure such deficiencies. (Doc. No. 25 at 3:17-19.) Mascon did not respond to the letter. (Doc. No. 25 at 3:23-24.)

Additionally, on December 10, 2008, the day the parties were to file the Joint Claim Construction documents, Mascon sought to add a previously undisclosed alternate construction for the term "formed of." (Doc. No. 25 at 4.) Pulse objected to the inclusion of the alternate construction in the joint documents, and Mascon now asks the court to consider it for claim construction purposes. (Doc. No. 20 at 2; Doc. No. 22 at 2.)

In its moving papers, Pulse asks this court to exclude the references and portions thereof which were not timely disclosed or produced by Mascon and to exclude expert testimony from Mascon's proposed expert for failure to provide adequate preliminary disclosure of the substance of the offered testimony. Pulse argues it was prejudiced in its ability to prepare Responsive Claim Constructions by Mascon's alleged failure to comply with the court's Scheduling Order and the Patent Local Rules.

II. Discussion

A. Legal Standards

Federal Circuit law governs the interpretation of the local patent rules at issue in this case. See 02 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006)(Federal Circuit law governs interpretation of local rules which apply only to patent cases and "directly affect the substantive patent law theories" presented by the parties).

The relevant local patent rules here are "essentially a series of case management orders." See Integrated Circuit Sys. v. Realtek Semiconductor Co., 308 F.Supp.2d 1106, 1107 (N.D. Cal. 2004)(referring to analogous Northern District patent rules). The deadlines for exchange and submission of claim construction materials were set in the court's supplemental case management order, referred to above. (Doc. No. 14.) In addressing non-compliance with scheduling orders, the district court may "impose any 'just' sanction..., including...'prohibiting [a] party from introducing designated matters into evidence." 02 Micro Int'l, 467 F.3d at 1363 (citing Fed.R.Civ.P. 16(f) and 37(b)(2)(B)). Such sanctions are particularly appropriate "where the undisclosed information is ...


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