The opinion of the court was delivered by: Cathy Ann Bencivengo United States Magistrate Judge
1) GRANTING PLAINTIFF'S MOTION TO STRIKE [Doc. No. 238]; 2) GRANTING PLAINTIFF'S MOTION TO COMPEL [Doc. No. 240]
On September 16, 2011, Fastek filed a motion to strike portions of the report of Terry Faddis, defendant Steco and Blue Tee Corporation's (jointly "Steco") expert on invalidity. [Doc. No. 238.] On September 24, 2011, Fastek filed a motion to compel production of documents regarding the sale of Steco's scrapper operations and technology to a third-party. [Doc. No. 240.]
The Court did not request further briefing from the parties.*fn1 A telephonic hearing was held on September 26, 2011 on both motions. George Belfield, Esq., and Valerie Ho, Esq., appeared for Fastek. Stephen Swinton, Esq., and Dan Schecter, Esq., appeared for Steco. The motions are GRANTED as follows.
Fastek's Motion to Strike
On August 19, 2011, pursuant to the Scheduling Order in this case [Doc. No. 126], Steco served the report of its expert, Terry Faddis, on the invalidity of the patents-at-issue. The report includes two prior art references, U.S. Patent No. 3,186,566 ("Spinanger patent") and U.S. Patent No. 3,815,746 ("Gilfillan patent") as part of the expert's invalidity analysis. The Spinanger and Gilfillan patents are prior art references cited on the patents-at-issue. Consequently, Steco has been aware of these references
the beginning of this lawsuit, at least.
On May 27, 2011, Steco served its final invalidity contentions on Fastek. These contentions make no reference to the Spinanger or Gilfillan patent in the analysis set forth. Despite the absence of references in Steco's contentions, the expert has incorporated them in his report. Fastek moves to these prior art references as part of Steco's invalidity analysis.
The Patent Local Rules require that a party opposing a claim of infringement serve invalidity contentions which must contain the identity of each item of prior art that allegedly anticipates each asserted claim or renders it obvious, and a chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found. Patent L.R. 3.3, 3.6. In this case a final set of contentions was scheduled to be served prior to the exchange of expert reports. [Doc. No. 126.] Steco's final contentions did not include the Spinanger or Gilfillan patents. The argument of Steco's counsel that the references are cumulative to that which was disclosed in the contentions does not excuse absence of their identification with the particularity required by the Patent Local Rules.
Fastek was entitled to know all the art, and in what combinations, Steco would be relying upon for its invalidity analysis in Steco's final invalidity contentions. These references were not included, although fully known to Steco at the time its final contentions were served. They are not properly part of expert's report. The motion to strike is GRANTED.
Supplemental Document Production
Fastek also seeks an order compelling the production of an asset purchase agreement between defendant Blue Tee Corp. and Astec Industries, Inc., and all related documents. Some time in August, Fastek learned that defendant Blue Tee reached an agreement with Astec to sell Astec certain assets of
Tee Corp., including Steco, the division responsible for the alleged infringing product. Fastek requests Blue Tee produce the executed agreement and all related documents including drafts, proposals, negotiations, and due diligence documents, and all other e-mails, correspondence, notes and memos regarding the transaction.
As is generally the case in this matter, nothing is simple. The relevance of the sale of the Steco division to this litigation is limited. On May 19, 2011, Fastek transferred all right, title and interest in the patents-at-issue to its parent company, Advanced Steel Recovery. Consequently, Fastek's remedies case are limited to past damages for infringement up to May 19, 2011. If the liability for those damages shifts to Astec with the asset purchase, Fastek is entitled to know that. Consequently, the relevant pages of the ...