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Shen Wei Inc. v. Sempermed USA

March 12, 2009

SHEN WEI (USA) INC. AND MEDLINE INDUSTRIES, INC., PLAINTIFFS,
v.
SEMPERMED USA, INC., DEFENDANT.



The opinion of the court was delivered by: Judge Ronald A. Guzmán

MEMORANDUM OPINION AND ORDER

Plaintiffs have sued defendant for infringing U.S. Patent No. 6,953,582. The case is before the Court for rulings on: (1) plaintiffs' objections to Magistrate Judge Nolan's order granting defendant's motion to strike portions of plaintiffs' expert witnesses' sur-rebuttal reports; (2) defendant's motion to strike portions of plaintiffs' submissions in support of their motion for summary judgment and in opposition to defendant's motion; (3) plaintiffs' motion to strike the testimony of defendant's expert Dr. Mark Redmond; and (4) both parties' motions for summary judgment. For the reasons set forth below, the Court overrules plaintiff's objections to Magistrate Judge Nolan's ruling, grants in part and denies in part the parties' motions to strike, denies plaintiffs' motion for summary judgment and grants defendant's motion for summary judgment.

Objections to Judge Nolan's Ruling

The Court will set aside Judge Nolan's ruling on defendant's motion to strike only if the ruling "is clearly erroneous or contrary to law." 28 U.S.C. § 636(b)(1)(A); Fed. R. Civ. P. 72(a). It is neither. The issue is not, as plaintiffs insist, whether they timely served the sur-rebuttal reports of their experts McFadden and Wickett. Rather, it is whether the challenged portions of those reports actually constitute rebuttal testimony.

Federal Rule of Civil Procedure 26 ("Rule") requires an expert witness to give "a complete statement of all opinions [he] will express and the basis and reasons for them" in his initial report. Fed. R. Civ. P. 26(a)(2)(B)(I). The Rule also permits experts to submit rebuttal reports but limits the contents of those reports to "evidence [that] is intended solely to contradict or rebut evidence on the same subject matter identified" in another party's expert witness report. Fed. R. Civ. P. 26(C)(ii). In other words:

A party presents its arguments as to the issues for which it has the burden of proof in its initial expert report. And in its rebuttal expert report, it presents expert opinions refuting the arguments made by the opposing party in its initial expert report. The rebuttal expert report is no place for presenting new arguments, unless presenting those arguments is substantially justified and causes no prejudice.

Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7713, 2005 WL 1300763, at *2 (N.D. Ill. Feb. 22, 2005).

In his rebuttal report, defense expert Redmond said plaintiffs had no evidence that: (1) Vitamin E functions the same way within the combination of substances that comprise the coating of the accused glove as it does in isolation; (2) any of the coating's constituent substances is transferred to the wearer's hand; or (3) any substance that may be transferred performs the skin-enhancing functions claimed in the '582 Patent. (Exs. Supp. Pls.' Mem. Supp. Mot. Summ. J. & Stmt. Mat'l Facts [hereafter, "Pls.' Exs."], Ex. 31, Redmond Rebuttal Report ¶¶ 11, 35-36, 39-41.) Rather than refuting Redmond's opinions with evidence plaintiffs previously proffered, Wickett and McFadden said, for the first time, in their sur-rebuttal reports that the coating of the accused glove contains substances other than Vitamin E that perform the claimed skin-enhancing functions and, when they are combined with Vitamin E, do not inhibit its skin-enhancing properties. (See Pls.' Ex. 4, Wickett Sur-Rebuttal Report at 10-12; Exs. Supp. Pls.' Opp'n Sempermed's Mot. Summ. J. & Pls.' Resp. Def.'s Stmt. Mat'l Facts [hereafter, "Pls.' Opp'n Exs."], Ex. FF, McFadden Sur-Rebuttal Report at 4-5.) In addition, McFadden said, for the first time, that he had worn the accused gloves and found that they left a smooth, but not greasy, coating on his hands. (Pls.' Opp'n Ex. FF, McFadden Sur-Rebuttal Report at 5-7.) The Court agrees with Judge Nolan that these are new opinions, not rebuttal evidence within the meaning of Rule 26.

The Court also agrees that plaintiffs' failure to disclose these opinions earlier was not justified. From the inception of this suit through the submission of their initial expert report, plaintiffs identified only one substance in the accused glove that allegedly performs the skin-enhancing functions claimed in the '582 Patent: Vitamin E. (See Pls.' Ex. 63, Pls.' Answer Def.'s Interrog. No. 1; Pls.' Ex. 3, McFadden Expert Report at 9-10, 13, 16-17.) Moreover, though they knew Vitamin E was not the only substance in the accused gloves' coating, the McFadden's initial expert report contains no opinions about the properties of the other substances, or the effect, if any, that they have on Vitamin E. (See generally, Pls.' Ex. 3, McFadden Report.) Similarly, though he could have done a "try-on" test of the accused gloves at the beginning of the case, McFadden waited until sur-rebuttal to do so. Because plaintiffs offered no explanation for their belated production of this evidence, Judge Nolan correctly found that the delay was unjustified.

However, even unjustified delays can be excused if they do not prejudice the other party. Plaintiffs say there was no prejudice here because they gave defendant their experts' sur-rebuttal reports before defendant took their depositions. That argument ignores the fact that defendants spent two and one-half years preparing a defense based on plaintiffs' original representations, i.e., that Vitamin E was the only substance in the accused gloves' coating that performs the skin-enhancing functions claimed in the patent and they would not rely on evidence from their expert's "try-on" test.

Given the circumstances, Judge Nolan's conclusion that defendant was prejudiced by plaintiffs' delay was not clearly erroneous. Plaintiffs' objections to Judge Nolan's ruling are overruled.

Motion to Strike Portions of Plaintiffs' Submissions

Defendant asks the Court to strike paragraphs 21-23 of plaintiffs' Local Rule 56.1(a) Statement of Undisputed Material Facts and paragraphs 208-210 of plaintiffs' Local Rule 56.1(b) Statement of Additional Material Facts because they are supported, in whole or in part, by the stricken sur-rebuttal evidence. The Court grants in part and denies in part the motion as follows:

(1) paragraphs 21 and 208, which are identical, will stand because the assertions in it are supported by the other evidence cited;

(2) the assertions that: (a) cetearyl alcohol, Vitamin A and Vitamin D2 Ecocalciferol have "skin-soothing, skin moisturizing, skin humectant, skin conditioning, skin medicinal, skin anti-inflammatory and skin nourishing" properties; (b) propylene glycol has skin-soothing, skin medicinal, skin anti-inflammatory and/or skin nourishing properties; and (c) Vitamin E in combination with other substances is a "skin conditioning and moisturizing substance, as well as a skin medicinal substance, a skin humectant substance, a skin nourishing substance, a skin anti-inflammatory substance, a skin emollient, and skin soothing substance" are stricken from paragraphs 22 and 209, which are identical. The remaining assertions in those paragraphs will stand.

(3) the last three sentences of paragraphs 23 and 210, which are identical and unsupported by the evidence cited, are stricken.

The Court also strikes plaintiffs' exhibits 34-36 and 37-39, which they submitted solely to support the stricken fact assertions, and any arguments they make in their summary judgment briefs that are based on the stricken assertions or exhibits.

Defendant also asks the Court to strike plaintiff's exhibit 32, a list of the ingredients in the Vitamin E lotion used in the accused gloves produced by third party Sintal because plaintiffs obtained it after the close of discovery. Plaintiffs say the motion should be denied because, though they received the document ten days after discovery closed, they had requested it well before. Given their diligence in seeking discovery from Sintal, plaintiffs say the document should remain in the record.

The record does not bear out plaintiffs' claims of diligence. Earlier this year, the Court extended the discovery deadline from March 17 to April 18, 2008, in part, so plaintiffs could "complete discovery pursuant to [their] subpoena to Sintal." (See Joint Mot. Modify Discovery Schedule of 3/4/08 at 2; Minute Order of 3/21/08.) Plaintiffs then waited until April 15, 2008, three days before the new cut-off date, to depose Sintal. (Pls.' Resp. Opp'n Sempermed's Mot. Strike Specific Sections Pls.' Mot. Summ. J., Opp'n Sempermed's Mot. Summ. J. & Statement Undisputed Material Facts at 5.) Not surprisingly, during the deposition, plaintiffs learned that Sintal had a document -- the "recipe" for the Vitamin E lotion used in the accused gloves -- that it should have, but had not, produced. (Id.) Despite the looming discovery deadline, plaintiffs did not file a motion to compel or ask the Court to extend the discovery deadline. (Id.) Instead, they simply waited for Sintal to produce the document. (Id.) Because the record belies plaintiffs' claim that they diligently sought the document, their exhibit 32, the Court strikes it from the record.

Motion to Strike Portions of Defense Expert Redmond's Testimony

Plaintiffs say defense expert Redmond is not qualified to render many of the opinions contained in his reports because he has no expertise in glove manufacturing or patent law. (See Exs. Supp. Pls.' Mot. Strike Testimony Def.'s Expert Dr. Mark Redmond, Ex. 3, Redmond Expert Report ¶¶ 3-7, 12 (stating that he has a Ph.D in biochemistry, has spent twenty years in the biotechnology industry and is an expert in "the biochemistry and action of natural ingredients," including "oat extracts and [their] utilization in cosmetics, personal care, and therapeutic applications" but not "in the manufacture of gloves" or "the field of patent law").) The Court agrees that Redmond's lack of expertise in those areas bars him from offering opinions on enablement, best mode, adequacy of written description and the glove manufacturing process. But he can testify about, among other things, how a person skilled in the art of the biochemistry of natural ingredients and their use in cosmetic, personal care and therapeutic applications would interpret the terms used in the '582 Patent and others to describe skin-enhancing functions. With these principles in mind, the Court turns to the contested statements.

The Expert Report

Defendant asks the Court to strike, in whole or part, paragraphs 17-32, 36-41, 86-95, 97-152, 154-57, 178, 184 and 214-48 from Redmond's expert report. The Court strikes:

-Paragraph 17: the first paragraph; the second paragraph on page 6 (starting with "Thus, 'SKIN CONDITIONING SUBSTANCE'" and ending with "related to aloe vera"); and the first sentence of the third paragraph; -Paragraph 18: the last paragraph; -Paragraph 25: the first paragraph; -Paragraph 27: the last sentence; -Paragraph 28 in its entirety; -Paragraph 29: the last sentence; -Paragraph 31: the last sentence; -Paragraph 32: the last sentence; -Paragraphs 36-41, 86 and 87 in their entirety; -Paragraph 88: the words "I note also that the '154 patent never describes using substances which are" from the first sentence; the second sentence in its entirety; the third sentence in its entirety; and the last sentence in its entirety; -Paragraphs 90-93 in their entirety; -Paragraph 94: the last two sentences; -Paragraph 95: the words "The '154 specification discloses a substance which dissolves to form a water" from the first sentence; and the second sentence in its entirety; -Paragraph 97: the last sentence; -Paragraphs 98-100 in their entirety; -Paragraph 101: the words "The '154 specification discloses a substance which dissolves to form a water" from the first sentence; and the second sentence in its entirety; -Paragraphs 102-05 in their entirety; -Paragraph 106: all language except "Perspiration will always contact, wet or moisturize whatever is found on the inside of a latex glove"; -Paragraphs 107-08 in their entirety; -Paragraph 109: the first sentence; -Paragraph 110: the words "Thus, the claims of the '582 patent expand the invention to cover" and "such that the substances covered by the claims extend to substances which do not dissolve in water, but which" from the first sentence; and the second sentence in its entirety; -Paragraph 111: the first sentence; -Paragraph 113: the last sentence; -Paragraph 114: the last sentence; -Paragraphs 115-16 in their entirety; -Paragraph 117: the words "functional," "so" and "so as to render all of the claims vague and indefinite, and thus unpatentable under 35 U.S.C. § 112" from the first sentence; -Paragraph 118 in its entirety; -Paragraph 120 in its entirety; -Paragraph 121: the words "I suspect that the reason the '582 patent claims were written this way is because" from the first sentence; the third sentence in its entirety; -Paragraph 122: all language except the second sentence; -Paragraphs 123-32 in their entirety; -Paragraph 133: the last two sentences; -Paragraph 134: the last two sentences; -Paragraph 135: the first sentence; the second paragraph; the last sentence; -Paragraph 136: the last sentence; -Paragraph 137: the second sentence; -Paragraphs 138 and 139 in their entirety; -Paragraph 140: the language "as the '154 patent specification itself emphasizes" from the last sentence; -Paragraph 141: the language "but as I have said above that is not the test for adequate description as I understand it"; -Paragraphs 142-43 in their entirety; -Paragraphs 145-46 in their entirety; -Paragraph 147: the first sentence; -Paragraphs 148-57 in their entirety; -Paragraph 178: the last sentence; -Paragraph 184: the words "and/or would have rendered" and "obvious" from the third sentence; -Paragraphs 214-24 in their entirety; -Paragraph 225: all language except the last sentence; -Paragraphs 226-27 in their entirety; -Paragraph 228: the words "Yet, further, to the extent that the '582 patent uses vague functional claim language" from the second sentence; -Paragraph 229: the first sentence; -Paragraph 230: the words "adds to the obvious nature of using a natural extract in a latex glove" from the first sentence; the words "was obvious and" from the second sentence; -Paragraphs 232-38 in their entirety; -Paragraphs 240-48 in their entirety.

In all other respects, Redmond's expert report will stand as written.

The Supplemental Report

Defendant also asks the Court to strike, in whole or part, paragraphs 12, 24 and 27 of Redmond's supplemental report (Exs. Supp. Pls.' Mot. Strike Testimony Def.'s Expert Dr. Mark Redmond, Ex. 4). The Court strikes:

-Paragraphs 12 and 24 in their entirety; -Paragraph 27: all language except "I also note the fact silicon and spearmint oil are both recognized and/or claimed skin conditioning substances."

In all other respects, Redmond's supplemental report will stand as written.

The Sur-Rebuttal Report

Finally, defendant asks the Court to strike paragraphs 12-16, 24-117, 123-24, 128-29, 131 and 134 of Redmond's sur-rebuttal report (Exs. Supp. Pls.' Mot. Strike Testimony Def.'s Expert Dr. Mark Redmond, Ex. 5). The Court strikes:

-Paragraph 12 in its entirety; -Paragraph 13: the words "and to determine what is claimed and what is not" from the penultimate sentence; -Paragraphs 15 and 16 in their entirety; -Paragraph 24: the second sentence; and the last sentence; -Paragraphs 25 and 26 in their entirety; -Paragraph 27: the first sentence; the words "These" and "such that the substances covered by the claims extend to substances which do not dissolve in water" from the second sentence; and the last sentence in its entirety; -Paragraph 28 in its entirety; -Paragraph 29: the first sentence; and the last sentence; -Paragraph 30: the words "in order to have full disclosure" from the last sentence; -Paragraph 31 in its entirety; -Paragraph 32: the first sentence; -Paragraph 35: the words after "functional preparations" in the first sentence; and the words "after reading the disclosure of the '154 and '582 patents" from the last sentence; -Paragraph 36: the last sentence; -Paragraphs 37-39 in their entirety; -Paragraph 40: the words "as claimed in Claim 3" from the first sentence; -Paragraph 49: the words "(also theoretically covered by the claims of the '582 patent)"; -Paragraphs 51-54 in their entirety; -Paragraph 55: the first sentence; the words "nor the '154 or '582 patents" from the last sentence; -Paragraph 56 in its entirety; -Paragraph 57: the first two sentences; and the last sentence; -Paragraph 58: the last sentence; -Paragraph 59: the words "to the claimed subject matter of the '582 patent"; -Paragraphs 61 and 62 in their entirety; -Paragraph 65 in its entirety; -Paragraph 66: the words "such as those claimed in the '582 patent" from the first sentence; and the last sentence in its entirety; -Paragraph 67 in its entirety; -Paragraph 68: the last sentence; -Paragraph 72: the words "and claim validation"; -Paragraphs 78-83 in their entirety; -Paragraphs 86 and 87 in their entirety; -Paragraph 88: the first sentence; -Paragraph 90: the words "as to the '582 and '154 patents [sic] failing to provide"; -Paragraphs 91 and 92 in their entirety; -Paragraph 94 in its entirety; -Paragraph 96-99 in their entirety; -Paragraph 100: the first sentence; -Paragraphs 101-04 in their entirety; -Paragraph 105: the words "so that one would not know whether the functional term is satisfied or not"; -Paragraph 107 in its entirety; -Paragraph 109: the words "however it is not clear to me how an emollient contained in the glove claimed in the '582 patent is directed to be rubbed-in"; and the last sentence in its entirety; -Paragraph 110 in its entirety; -Paragraph 112: the last sentence; -Paragraph 113 in its entirety; -Paragraph 115: the words "which appears as a limitation in claims 46 and 50" from the second sentence; and the last sentence in its entirety; -Paragraph 116: the words "necessary so as to permit one to determine when a claim is infringed, and when it is not"; -Paragraph 117: the words "and rendered obvious by" and "or the Ostar(r) manufacturing process"; -Paragraph 123: the first sentence; the last sentence; -Paragraph 124 in its entirety; -Paragraphs 127 and 128 in their entirety; -Paragraph 129: the first sentence; the words from the third sentence "and the limitation to hair and fabric conditioners is contrary to the teaching of the '943 patent"; -Paragraph 131 in its entirety; -Paragraph 134: the first sentence; the last sentence;

In all other respects, Redmond's sur-rebuttal report will stand as written.

Summary Judgment

Plaintiff Shen Wei is a manufacturer of disposable gloves that are distributed by plaintiff Medline. (Def.'s Corrected Resp. Pls.' Local Rule 56.1(a) Stmt. Material Facts [hereafter, "Def.'s Resp. Pls.' LR 56.1(a)"] ¶¶ 1, 3-4.) Shen Wei is the owner of U.S. Patent No. 6,953,582 ("the '582 Patent"), entitled "Skin-Enhancing Glove and Method of Manufacture." (Def.'s Resp. Pls.' LR 56.1(a) ¶ 8; Pls.' Exs. Supp. Mem. Supp. Mot. Summ. J. [hereafter, "Pls.' Exs."], Ex. 1,'582 Patent at 1.) The '582 Patent is a descendent of another Shen Wei patent, U.S. Patent No. 6,274,154 ("the '154 Patent"), the application for which was filed on April 7, 1999. (Pls.' Ex. 1, '582 Patent at 1.)

Defendant Sempermed sells disposable gloves under the name Polymed(r) TLC ("Polymed gloves"). (Def.'s Resp. Pls.' LR 56.1(a) ¶ 5.) Plaintiffs have sued defendant for patent infringement and contend that the Polymed gloves infringe claims 1-5, 7, 13-15, 22, 25-29, 34, 45-47 and 49-51 of the '582 Patent. (See Am. Compl.; Pls.' Opp'n Def.'s Mot. Summ. J. at 2 n.1.) Sempermed has countersued for a declaration that the Polymed gloves do not infringe and the claims of the '582 Patent are invalid and unenforceable. (See Third Am. Countercl.) Both parties seek summary judgment on their claims.

To prevail on a summary judgment motion, "the pleadings, the discovery and disclosure materials on file, and any affidavits [must] show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). At this stage, we do not weigh evidence or determine the truth of the matters asserted. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). We view all evidence and draw all inferences in favor of the non-moving party. Michas v. Health Cost Controls of Ill., Inc., 209 F.3d 687, 692 (7th Cir. 2000). "In considering cross-motions for summary judgment, we are obliged to view all facts and draw all reasonable inferences in a light most favorable to the party against whom the motion under consideration is made." Gazarkiewicz v. Town of Kingsford Heights, 359 F.3d 933, 939 (7th Cir. 2004). Summary judgment should be granted only when the record as a whole establishes that no reasonable jury could find for the non-moving party, Michas 209 F.3d at 692, and is "as appropriate in a patent case as it is in any other." C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 672 (Fed. Cir. 1990). Because defendant's motion, if successful, will moot plaintiffs' motion, the Court will start with it, viewing the evidence in the light most favorable to plaintiffs.

I. Anticipation

A. Article Claims

Defendant argues that claims 13-16, 18, 22, 27 and 48-51 ("article claims")*fn1 of the '582 Patent are anticipated by the prior art Ostar(r) glove. A claim is anticipated if "each [of its] element[s] . . . is found, either expressly or under principles of inherency, in a single prior art reference," or "the claimed invention was previously known or embodied in a single prior art device or practice." Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992). Patents are presumed to be valid. 35 U.S.C. ยง 282. To overcome this ...


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