The opinion of the court was delivered by: SUZANNE CONLON, District Judge
MEMORANDUM OPINION & ORDER
Liquid Dynamics Corporation ("Liquid Dynamics") sues Vaughan
Company, Inc. ("Vaughan") for infringement of U.S. Patent No.
5,458,414 ("the '414 patent") pursuant to 35 U.S.C. § 271 et
seq. Liquid Dynamics sells a commercial mixing system called
"JetMix." JetMix uses the invention described in the '414 patent
to prevent settling and separation of liquid and solid components
stored in slurry tanks. Liquid Dynamics claims Vaughan's
competitive product, "RotaMix," uses mixing systems covered by
the '414 patent. Vaughan counterclaims for invalidity and
inequitable conduct. The court granted Vaughan's summary judgment
motion on non-infringement of the '414 patent. Liquid Dynamics
Corp. v. Vaughan Company, Inc., No. 01 C 6934, 2002 U.S. Dist.
LEXIS 14102 (N.D. Ill. Jul. 31, 2002). The Federal Circuit
reversed and remanded the case for trial. Liquid Dynamics Corp.
v. Vaughan Company, Inc., 355 F.3d 1361 (Fed. Cir. 2004). Both
parties move in limine to bar evidence at trial. DISCUSSION
Evidence is excluded on a motion in limine only if the
evidence is clearly inadmissible for any purpose. See Hawthorne
Partners v. AT&T Technologies, 831 F. Supp. 1398, 1400 (N.D.
Ill. 1993). Motions in limine are disfavored; admissibility
questions should be ruled upon as they arise at trial. Id.
Accordingly, if evidence is not clearly inadmissible, evidentiary
rulings must be deferred until trial to allow questions of
foundation, relevancy and prejudice to be resolved in context.
Id. at 1401. Denial of a motion in limine does not indicate
evidence contemplated by the motion will be admitted at trial.
Instead, denial of the motion means the court cannot or should
not determine whether the evidence in question should be excluded
before trial. United States v. Connelly, 874 F.2d 412, 416 (7th
II. Liquid Dynamics' Motions in Limine
A. Limit Expert Testimony to Disclosed Opinions
1. Liquid Dynamics' Arguments
Liquid Dynamics moves in limine to exclude any expert
testimony that is new and untimely disclosed. Specifically,
Liquid Dynamics asserts that on May 1, 2002, the last day for
disclosure of Rule 26(a)(2) rebuttal expert reports, Vaughan
submitted a report signed by employees Glen Dorsch and Kent
Keeran ("the Dorsch/Keeran report"). On June 10, 2002, the court
struck Section III, a purported computational flow dynamics
("CFD") study on a system in Plymouth, Indiana and Section IV, a
purported CFD study on another patent, as new and untimely expert
opinion. Liquid Dynamics argues that all trial testimony
pertaining to Sections III or IV of the Dorsch/Keeran report must
be excluded. Liquid Dynamics further contends any new opinion
testimony by Dorsch or Keeran regarding infringement or critiques of CFD simulations
conducted by Liquid Dynamics' expert, Dr. Lueptow, beyond that
disclosed in the original report should also be excluded.
Finally, Liquid Dynamics asserts Vaughan should be limited to
offering either Dorsch or Keeran to testify about the report in
accordance with this court's standing order limiting each party
to only one expert witness per subject.
Vaughan responds that it does not intend to present expert
testimony from both Dorsch and Keeran. However, Vaughan asserts
both witnesses worked directly on the design, analysis and
implementation of some or all of Vaughan's accused systems. Thus,
both will likely be offered at trial for fact testimony. With
respect to Sections III and IV of the report, Vaughan affirms it
will not violate the court's order. However, Vaughan contends it
originally submitted Sections III and IV in the event Liquid
Dynamics' experts testify, despite the absence of any such
opinions in their reports, that prior art did not generate a
substantial helical flow. If Liquid Dynamics does not offer new
testimony, Vaughan will not offer Sections III and IV barred by
the court's order.
Fed.R. Civ. P. 26(a) requires disclosure of expert witnesses
and their written reports. The rule provides, "these disclosures
shall be made at the times and in the sequence directed by the
court." Fed.R. Civ. P. 26(a)(2)(c). Failure to comply with Rule
26 precludes a party from using at trial expert testimony that
was not timely or fully disclosed. Fed.R. Civ. P. 37(c)(1). The
sanction of exclusion is mandatory and automatic unless the party
can show its Rule 26(a) violation was either justified or
harmless. Finley v. Marathon Oil Co., 75 F.3d 1225, 1230 (7th
Cir. 1996). The court previously struck Sections III and IV of
the Dorsch/Keeran report as untimely disclosed expert opinion. The motion in limine to exclude any evidence or
testimony relating to Sections III and IV of the Dorsch/Keeran
report must be granted. Further, the motion in limine to
exclude all new opinion testimony by Dorsch or Keeran regarding
infringement or critiques of Lueptow's CFD simulations beyond
that disclosed in the original Dorsch/Keeran report is granted.
Finally, this court's "Standing Order Establishing Pretrial
Procedure" limits each party to one expert witness per topic.
Liquid Dynamics' motion to preclude Vaughan from presenting both
Dorsch and Keeran as experts is moot in light of Vaughan's
representation that it will not do so. The motion in limine to
preclude both witnesses from testifying must be denied.
B. Expert Testimony of Norcross and Bathija
1. Liquid Dynamics' Arguments
Liquid Dynamics seeks to exclude expert testimony by Prakash
Bathija, who is on Vaughan's witness list. Liquid Dynamics
asserts Bathija is the author of an article entitled "Jet
Mixing." However, Bathija was not timely disclosed as an expert
witness. The court is asked to limit his testimony to
authentication of the article because any testimony beyond
authentication would amount to expert opinion. Further, Liquid
Dynamics seeks to exclude undisclosed expert opinion testimony
from Ken Norcross, also on Vaughan's witness list. On July 18,
2002, the court struck Norcross' summary judgment declaration as
untimely and inappropriate expert opinion not disclosed prior to
April 1, 2002, the deadline for disclosure of expert reports.
However, Liquid Dynamics is concerned Vaughan will elicit expert
opinion from Norcross at trial under the guise of lay opinion.
Norcross is a former vice-president and director of technology
at U.S. Filter Jet-Tech. Vaughan asserts Norcross was identified
well before the close of discovery as a witness having knowledge regarding prior art systems. Vaughan contends the
court's July 18, 2002 order striking Norcross' declaration
acknowledged Norcross' knowledge of certain prior art systems.
Vaughan proposes to call Norcross as a lay witness having
personal knowledge of prior art, but not as an expert witness.
Vaughan assures the court Norcross' testimony is purely factual
in nature and he will not be asked to opine on flow patterns.
Finally, Vaughan indicates it will not call Bathija as a witness
Liquid Dynamics' motion regarding Bathija is moot in light of
Vaughan's representation that Bathija will not be called to
testify. As to Norcross, the July 18, 2002 order specifically
ruled that Norcross' conclusory opinions in his summary judgment
declaration regarding helical flow patterns of prior art mixing
systems were "not lay witness opinion under Fed.R. Evid. 702.
The '414 patent and purported prior art helical flow patterns
have been the subject of expert testimony by both parties. The
analysis of a system's flow patterns is based on technical and
scientific data." Further, Norcross' summary judgment declaration
lacked sufficient foundation to establish his opinions regarding
the validity of the '414 patent and the mixing industry's prior
use of the '414 patent's claims were based on personal knowledge.
Accordingly, the court struck Norcross' inappropriate and
untimely expert testimony. Contrary to Vaughan's assertions, the
court did not rule that Norcross is knowledgeable regarding
certain prior art systems. Rather, the court indicated four
paragraphs of his declaration that explained U.S. Filter Jet-Tech
documents were apparently based on personal knowledge.
With proper foundation, lay opinion testimony may be admissible
to assist the jury or court understand the factual issues.
Stagman v. Ryan, 176 F.3d 986, 995-96 (7th Cir. 1999). However, Fed.R. Evid. 701 provides lay witnesses may not opine regarding
scientific, technical or other specialized knowledge within the
scope of Fed.R. Evid. 702. Lay opinion testimony is "not to
provide specialized explanations or interpretations that an
untrained layman could not make if perceiving the same acts or
events." U.S. v. Conn, 297 F.3d 548, 554 (7th Cir. 2002). The
motion in limine regarding Norcross is granted in part.
Norcross may not testify to the flow pattern information
contained in his summary judgment declaration. With proper
foundation evidencing personal knowledge, Norcross' testimony
regarding prior art systems is not clearly inadmissible for all
purposes. The extent to which Norcross may offer lay opinion
testimony not based on scientific, technological or other
specialized knowledge, however, is unclear. The court must
reserve ruling on the admissibility of Norcross' lay opinion
testimony until trial. The parties will not refer to Norcross'
opinions in opening statements, through questioning witnesses, or
otherwise in the jury's presence without prior court
C. Expert Testimony of Breidenthal
1. Liquid Dynamics' Arguments
Liquid Dynamics seeks to exclude the testimony of Dr. Robert
Breidenthal, an expert witness who submitted two reports on
Vaughan's behalf and was deposed during discovery. Liquid
Dynamics contends Breidenthal's opinions regarding patent
validity and infringement should be barred because they are based
on an improper claim construction rejected by the Federal
Circuit. Liquid Dynamics argues Breidenthal's opinions are
expressly based on an interpretation requiring the claim term
"substantially helical" to conform to Figure 6 of the '414
patent. In contrast, the Federal Circuit construed the term
"substantially helical" to encompass "all flow patterns that are
generally, though not necessarily perfectly, spiral and that fill
much, though not necessarily all, of the tank's volume." Liquid Dynamics, 355 F.3d at 1369. This
construction expressly rejected any claim construction requiring
the nearly perfect helix portrayed by Figure 6. The Federal
Circuit held it is inappropriate to rely "on the written
description of Figures 5 and 6 to import the limitation of a
perfectly helical flow. There is no language in the claim
requiring such a perfectly helical flow." Id. at 1368. ...