The opinion of the court was delivered by: Milton I. Shadur Senior United States District Judge
MEMORANDUM OPINION AND ORDER
This Court's June 3 memorandum opinion and order ("Obviousness Opinion") resolved one of the four motions in limine that had been tendered by Meyer Intellectual Properties Limited and Meyer Corporation, U.S. ("Meyer," treated hereafter as a singular noun) after entry of the final pretrial order ("FPTO") looking to the trial of this action.*fn1 This opinion will address Meyer's other three motions:
1. its Motion in Limine To Bar Certain Exhibits as Purported "Prior Art" (Dkt. 162);
2. its Motion in Limine To Bar Bodum's Evidence of Inequitable Conduct (Dkt. 164); and
3. its Motion in Limine To Bar Certain Undisclosed and Inadmissible Prior Art in Support of Bodum's Claim of Invalidity (Dkt. 166).
Those motions will be dealt with here, not in numerical order, but rather in what appears to be a more logical sequence--Dkt. 166 first, then Dkt. 162, and finally Dkt. 164.
Dkt. 166 In response to Meyer's opening discovery request in its Interrog. Nos. 2 and 3, which sought the identification of "all prior art that Defendant contends render the claim invalid," Bodum identified a not particularly extensive group of items. Although Fed. R. Civ. P. ("Rule") 26(e) requires ongoing supplementation of any discovery responses, Bodum never expanded that original listing. Because Rule 37(c)(1) precludes the use at trial of any nonsupplemented items (with limited exceptions not applicable here), Bodum's initial response has set the outer boundaries of the potential "prior art" universe.
That then excludes from the case the large laundry list of other documents that Bodum has included in its designation of proposed exhibits in the FPTO. Moreover, the report of Bodum's designated opinion witness Robert John Anders ("Anders") that deals with the asserted invalidity of the patents in suit is grounded on just two of the originally identified items, so that the permissible borders have shrunk to that pair of items.
It simply will not do for Bodum to attempt to explode that narrow category by listing a huge number of proposed exhibits in the FPTO (see the five-page itemization in Ex. A to Dkt. 166, an itemization that has been annexed to this opinion). It must be remembered that there is a good reason for insisting on the formalism required by the rules and the caselaw: In this era of wide-ranging discovery, the very nature of that process is that deposition questions can permissibly cut a broad factual swath, and other discovery measures may be similarly expansive. All of that enables the inquiring party to filter out the matters on which it then chooses to rely, just as panning extensive quantities of silt is employed to locate and separate out the gold dust or gold nuggets that represent the real value for the prospector.
Just so with the Anders report. Its Part A.III identified 56 items (designated as 15.1 through 15.56) as matters that Anders reviewed en route to his arrival at the opinions that he then sets out in Parts B and C--just as he says in Part A.III that his opinions are also "based upon my knowledge, background, and experience." But after Anders thus stated his asserted qualifications to render any opinion (his document review plus his personal background), his ensuing opinions themselves focused solely on just two of those many items as the actual predicates for his stated conclusions.
With Bodum's "expert" witness Anders having thus defined the relevant prior art universe in precise and limited terms, it is not the province of Bodum's lawyers to expand the scope of that universe. Meyer's Dkt. 166 is granted.
Dkt. 162 Not content with having properly confined the "prior art" boundaries to the narrow scope selected by Anders himself, Meyer seeks to attack even those two items as not having been established as prior art. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576 (Fed. Cir. 1996) defines Bodum's burden in that respect:
By challenging the validity of the '155 patent, Bard bore the burden of persuasion by clear and convincing evidence on all issues relating to the status of the Cook catalog as prior art.
Regrettably the parties have not met head on in addressing that subject. Meyer points to language in 35 U.S.C. §§102 and 103 as limiting the potential candidates for "prior art" treatment to items "known or used by others in this country" or "in public use or on sale in this country." In response Bodum does not appear to make clear (1) whether it accepts those limitations but says ...