United States District Court, N.D. California
AMENDED ORDER RE STRYKER'S MOTION TO STRIKE
EXPERT REPORT Re: Dkt. Nos. 359, 360, 361, 365
JACQUELINE SCOTT CORLEY United States Magistrate Judge.
Karl Storz Endoscopy-America (“KSEA”) alleges
Defendants Stryker Corporation and Stryker Communications,
Inc. (together, “Stryker”) infringes four KSEA
patents. Now pending before the court is Stryker's motion
to strike portions of KSEA's expert reports. (Dkt. No.
360.) Having carefully reviewed the parties'
briefing and having had the benefit of oral argument on March
29, 2018, the Court GRANTS in part and DENIES in part
recently served five opening expert reports: Eric J. Gould
Bear, Albert Juergens, Frank D'Amelio, Kurtis Keller, and
Frank A. Bernatowicz. (Dkt. Nos. 359-7, 359-8, 359-9, 359-10,
360-6.) The deadline for the completion of expert discovery
is April 12, 2018. (Dkt. No. 292 at 2.)
requests the Court (1) strike the expert report of Eric J.
Gould Bear and preclude Mr. Gould Bear from testifying, (2)
strike new theories from the expert report of Albert Juergens
that were not disclosed in KSEA's infringement
contentions, (3) strike boilerplate statements about the
doctrine of equivalents from the expert reports of Mr.
D'Amelio, Mr. Keller, and Mr. Juergens and preclude KSEA
from asserting infringement under the doctrine of
equivalents, and (4) strike theories of damages from the
report of Frank Bernatowicz based on products that KSEA did
not accuse of infringement.
argument KSEA agreed that it will not rely upon: (1) the
phrase “including multiple instances of each”
from paragraph 213 of Mr. Juergens' expert report as to
the “plurality of camera heads” limitation, (2)
its experts' opinions regarding the doctrine of
equivalents, and (3) Mr. Bernatowicz's projected damages
calculations for products not accused of infringement.
Therefore, Stryker's requests to strike these items from
the expert reports are GRANTED. The Court shall proceed to
review Stryker's remaining challenges: striking Mr. Gould
Bear's report in its entirety and Mr. Juergens'
report as to the “memory devices” limitation.
Mr. Gould Bear's Report
argues Mr. Gould Bear's opines in his expert report as to
infringement of claim 3 of the ‘420 patent, but
provides no analysis as required by the Federal Rules and
therefore should be stricken in its entirety. Stryker also
insists that Mr. Gould Bear should also be precluded from
testifying about infringement.
Rule 26(a)(2), a party must disclose, as directed by the
court, its expert witnesses and a report that
“contain[s] a complete statement of all opinions to be
expressed and the basis and reasons therefor.” Rule 37,
in turn, provides that if a party fails to provide the
information required by Rule 26(a), “the party is not
allowed to use that information or witness to supply evidence
on a motion, at a hearing, or at a trial, unless the failure
was substantially justified or harmless.” Fed.R.Civ.P.
37(c)(1); see also Yeti by Molly Ltd. v. Deckers Outdoor
Corp., 259 F.3d 1101, 1106 (9th Cir. 2001) (“Rule
37(c)(1) gives teeth to these requirements by forbidding the
use at trial of any information required to be disclosed by
Rule 26(a) that is not properly disclosed.”). The
burden of proving an excuse is on the party facing sanctions.
See Yeti, 259 F.3d at 1107.
Gould Bear's report includes six sections: (1)
introduction, (2) summary of conclusions, (3) background and
qualifications, (4) materials reviewed, (5) legal principals
and methods, and (6) conclusion. (Dkt. No. 360-6 at 3.) Mr.
Gould Bear does not provide any analysis regarding how
“the accused products literally include each element of
Claims 1, 2 and 3 of the '420 Patent.”
(Id. at 15 ¶ 35). Even Mr. Gould Bear's
description of his process is conclusory: “I have
analyzed literal infringement with respect to each limitation
of the asserted patent claim, comparing the accused products
- in their ordinary and intended uses - to the invention
described in the patent claim they are alleged to infringe.
When analyzing a dependent claim, I determined whether the
allegedly infringing products include each and every element
of the dependent claim, the independent claim from which it
depends and all intermediate dependent claims.”
(Id. at 14-15 ¶ 32.) Mr. Gould Bear fails to
explain how he determined the allegedly infringing
products include each element of the dependent claim.
Instead, Mr. Gould Bear simply states that he
only explanation Mr. Gould Bear provides is that he studied
the materials identified in section four “materials
reviewed” and performed the “analysis described
herein” measured against the standards in section five,
“legal principals and methods.” While Mr. Gould
Bear cites to specific items for materials reviewed and legal
principals and methods, he fails to reference where the
reader can find his “analysis described herein.”
After a complete review of Mr. Gould Bear's report the
Court concludes Mr. Gould Bear has not provided the basis and
reasons for his expert opinions regarding the alleged
infringement of the asserted claim of the ‘420 patent.
argues Mr. Gould Bear “considered dozens of public and
confidential documents regarding the accused Stryker product
and KSEA's patented user interface” as well as
KSEA's infringement contentions and the documents Stryker
identified as providing the most accurate description of its
product. However, the review of certain documents does not
meet the requirement under Rule 26 to describe the
“reasons and basis” for his expert opinion.
KSEA argues Mr. Gould Bear “compared the accused
products with the claim that KSEA asserts is infringed, as a
person of skill in the art at the time of the invention would
understand the meaning of the patent claims” by
following a set of rules outlined in his report. This,
however, is a description of Mr. ...