United States District Court, W.D. Tennessee, Western Division
ORDER GRANTING PLAINTIFF'S MOTION TO EXCLUDE THE DECLARATION OF ROGER KERN REGARDING CLAIM CONSTRUCTION FOR U.S. PATENT NO. 6, 412, 267 AND REQUEST FOR EXPEDITED BRIEFING SCHEDULE
JON PHIPPS McCALLA, District Judge.
Before the Court is Plaintiff's Motion to Exclude the Declaration of Roger Kern Regarding Claim Construction for U.S. Patent No. 6, 412, 267 and Request for Expedited Briefing Schedule, filed March 16, 2015. (ECF No. 56.) In the Motion, Plaintiff USCO S.p.A. ("USCO") seeks three alternative remedies: 1) exclude the declaration of VPI's expert, Roger Kern; 2) "strike all improper and untimely affirmative opinions within the Kern Declaration;" or 3) "if the Court should rule that the Kern Declaration is admissible, USCO requests leave to allow Dr. Fleming an opportunity to prepare a rebuttal report to Mr. Kern's opinions." (ECF No. 56-4 at 3-4.) For the reasons stated below, the Court GRANTS Plaintiff's Motion.
To the extent Plaintiff's Motion requests expedited briefing, expedited briefing was granted by the Court in its Order Granting Consent Motion for Expedited Briefing Schedule. (ECF No. 61.)
This case concerns allegations of infringement of U.S. Patent No. 6, 412, 267 (the "'267 patent") asserted by Plaintiff USCO against Defendants ValuePart, Inc. ("VPI"), ACE Track Co., Ltd. ("ACE Track"), and REONE Track Co., Ltd. ("REONE Track") (collectively "the named Defendants").
A. Factual Background
"Plaintiff USCO is a joint stock company established under the laws of Italy with its principal place of business in Modena, Italy." (Compl. ¶ 5, ECF No. 1.) USCO sells and uses split master links and lubricated track assemblies that incorporate split master links, and is the owner of the '267 patent. (Id. ¶¶ 2, 5.)
The '267 patent protects a "method of manufacturing an openable link of a track." ('267 patent at 1, ECF No. 1-3 at PageID 44.) USCO alleges that Defendant VPI has infringed and continues to infringe the '267 patent by "import[ing], offer[ing] to sell, sell[ing], or us[ing] products which are made by the claimed methods of the '267 Patent within the United States, the State of Tennessee, and this district, thereby causing USCO to continue to suffer severe and irreparable harm." (Compl. ¶ 21.)
Relevant to the instant Motion, the deadline for initial expert claim construction reports was set as February 23, 2015 by the Court's Scheduling Order. (ECF No. 40 at 2.) USCO served its initial expert claim construction report authored by USCO's expert Dr. Mark A. Fleming on February 23, 2015. (ECF No. 56-4 at 4.) VPI did not serve an expert report or disclose an expert witness at that time. (Id.) On March 9, 2015, VPI submitted a rebuttal expert claim construction report (the "Kern Declaration") and disclosed Mr. Roger Kern as an expert. (Id. at 4-5.) USCO alleges that the Kern Declaration contains affirmative opinions and is in fact an initial expert report in the guise of a rebuttal report. (Id. at 4.)
B. Procedural Background
On July 30, 2014, Plaintiff USCO filed a Complaint against the named Defendants for patent infringement. (Compl., ECF No. 1.) On October 1, 2014, Defendant VPI filed its Answer, Affirmative Defenses, Counterclaims, Cross-Claims and Jury Demand to USCO S.p.A.'s Complaint. (ECF No. 19.) USCO filed an Answer to Defendant ValuePart, Inc.'s Counterclaims on October 27, 2015. (ECF No. 30.) On January 27, 2015, VPI filed an Answer, Amended Affirmative Defenses, Counterclaims, Cross-Claims and Jury Demand to USCO S.p.A.'s Complaint. (ECF No. 49.)
On October 1, 2014, VPI filed a Motion to Transfer Venue. (ECF No. 21.) USCO responded in opposition to VPI's Motion on October 20, 2014. (ECF No. 28.) VPI filed a Reply to USCO's Response on October 28, 2014. (ECF No. 33.) On November 14, 2014, the Court denied VPI's Motion to Transfer Venue. (ECF No. 41.)
On March 16, 2015, USCO filed a Motion to Exclude the Declaration of Roger Kern Regarding Claim Construction for U.S. Patent No. 6, 412, 267. (ECF No. 56.) On March 18, 2015, USCO filed a Notice of Clarification revising certain assertions made in the Motion to Exclude. (ECF No. 59.) On March 18, 2015, USCO also filed a Consent Motion for Expedited Briefing Schedule (ECF No. 60), which the Court granted on March 19, 2015 (ECF No. 61). On March 20, 2015, VPI filed a Response in ...