Ak Steel Corp. v. Sollac & Ugine

• Decision Date: 30 July 2002
• Docket Number: No. C-1-98-690.,No. C-1-98-804.,C-1-98-690.,C-1-98-804.
• Citation: 234 F.Supp.2d 711
• Parties: AK STEEL CORP. Plaintiff v. SOLLAC & UGINE Defendants
• Court: U.S. District Court — Southern District of Ohio

Page 711

234 F.Supp.2d 711

AK STEEL CORP. Plaintiff v. SOLLAC & UGINE Defendants

No. C-1-98-690.

No. C-1-98-804.

United States District Court, S.D.Ohio, Western Division.

July 30, 2002.

COPYRIGHT MATERIAL OMITTED

David E. Schmit, Ann G. Robinson, Frost, Brown, Todd, LLC, Cincinnati, OH, John J. Kuzman, Jr., AK Steel Corporation, Middletown, OH, for AK Steel Corp.

Steven E. Lipman, J.P. Lavelleye, Steven P. Weihrouch, Stephen G. Baxter, Michael E. McCabe, Jr., Clayton W. Thompson, II, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., Arlington, VA, Gregory A. Ruehlmann, David A. Pepper, Squire, Sanders & Dempsey, L.L.P., Cincinnati, OH, Edward A. Geltman, James V. Dick, James P. Wehner, Squire, Sanders & Dempsey, Washington, DC, for Ugine, Sollac.

Don W. Martens, Knobbe Martens Olson & Bear, Newport Beach, CA, pro se.

ORDER

DLOTT, District Judge.

This matter comes before the Court on the Report and Recommendation of Special Master (doc. # 188)¹ (the "Hardy Recommendation") and the Report and Recommended Decisions of Special Master Regarding Defendants' and Plaintiffs Motions for Summary Judgment (doc. # 201) (the "Martens Recommendation").

I. THE RECOMMENDATIONS

The Hardy Recommendation and the Martens Recommendation lay out in great detail the facts of these cases. The Court will rely on those factual summaries and present only those facts necessary to its analysis.

The Hardy Recommendation addresses Plaintiff AK Steel's Motion To Compel Discovery Regarding Testing By Defendants' Expert Witness Of Defendants' Furnace Atmosphere. (Doc. # 106.) Plaintiff moved to compel production of the results of gas composition tests conducted on Defendant Sollac's production line in September, October, and November of 1999. Defendants argued that these results are work product entitled to protection under Federal Rule of Civil Procedure 26(b)(3). Special Master Hardy examined the relevant documents in camera and recommended that Plaintiff's motion be denied.

The Martens Recommendation addresses several summary judgment motions: Defendants' First Motion For Partial Summary Judgment Concerning The Legal Interpretation Of The "At Least About 95% Hydrogen" Patent Claim Terms (doc. # 68), Defendants' Second Motion For Partial Summary Judgment Of Non-Infringement Of The "At Least About 95% Hydrogen" Patent Claims (doc. # 69), Defendants' Third Motion For Partial Summary Judgment Of (i) Non-Infringement, And (ii) Invalidity, Of The Kilbane Patents (doc. # 70), Plaintiff AK Steel's First Motion For Partial Summary Judgment Of Claim Construction (doc. # 107), and Plaintiff AK Steel's Second Motion For Partial Summary Judgment Of Claim Construction (doc. # 108). Special Master Martens's recommendations on these motions would result in granting summary judgment in favor of Defendants on most issues.

The Court will not address every aspect of the recommendations or the parties' objections to those recommendations. Nevertheless, the Court's rulings are based on a de novo review of both the Hardy Recommendation and the Martens Recommendation.

II. ANALYSIS

A. The Hardy Recommendation

Plaintiff AK Steel Corporation ("AK Steel") argues that Special Master Hardy erred in recommending that the Court deny its motion to compel for three reasons: (1) the gas test results do not reveal the mental impressions, conclusions, opinions, or legal theories of an attorney; (2) AK Steel has a substantial need for the data in preparing its case and cannot obtain the information or its substantial equivalent without undue hardship; and (3) Defendants waived work product protection.

AK Steel's first argument misunderstands Rule 26(b)(3). That rule protects from discovery all "documents and tangible things ... prepared in anticipation of litigation or for trial" absent a showing of substantial need and undue hardship. Fed.R.Civ.P. 26(b)(3). It also provides additional protection against disclosure "of the mental impressions, conclusions, opinions, or legal theories of an attorney." See Upjohn Co. v. United States, 449 U.S. 383, 400, 101 S.Ct. 677, 66 L.Ed.2d 584 (1981) ("Rule 26 accords special protection to work product revealing the attorney's mental processes."). The Special Master correctly found that the requested documents were "prepared in anticipation of litigation or for trial" and therefore entitled to at least qualified protection under Rule 26(b)(3). Therefore, whether or not the test data reveal mental impressions of Defendants' attorneys,² Plaintiff must nevertheless show at least substantial need and undue hardship in order to pierce work product protection.

AK Steel next contends that the Special Master erred because AK Steel has substantial need for the test data and obtaining its substantial equivalent would require undue hardship. In his recommendation, the Special Master assumed that AK Steel had substantial need for the results, but found that AK Steel had not shown that obtaining its own data would require undue hardship. AK Steel asserts undue hardship on two bases: (a) Defendants prevented Plaintiff from performing its own tests during its first Rule 34 visit to Defendants' plant and continue to deny Plaintiff access to the plant for testing; and (b) even if Plaintiff had access to the line, its employees do not have sufficient expertise to conduct their own tests.

Both arguments fail because AK Steel has not shown that it has sufficiently exhausted its normal discovery remedies. While accusing Defendants of failing to cooperate during its first Rule 34 visit to Sollac's plant in December 1999, AK Steel has never noticed another Rule 34 examination of the plant, nor has it moved for an order compelling Defendants to comply with its initial Rule 34 notice. Consequently, Plaintiff has not shown that Defendants would not allow it access to the relevant production line, or that Sollac's personnel, who have the expertise to aid AK Steel in conducting the necessary tests, would be unwilling to do so. Furthermore, it would effectively nullify the work product privilege to force Defendants to turn over their work product when Plaintiff did not fully pursue its rights during discovery.

Finally, AK Steel argues that the Special Master erred when he found that Defendants did not waive work product protection of the documents. Plaintiff asserts that Defendants waived Rule 26(b)(3) protection in two ways: (a) by submitting an expert report based on the test data with its second motion for summary judgment; and (b) by eliciting expert opinion testimony in deposition about tests conducted prior to December 1999. AK Steel's first argument is legally accurate in that Defendants may not assert work product protection for the test data and then use that data as evidence. Cf. United States v. Nobles, 422 U.S. 225, 239-40, 95 S.Ct. 2160, 45 L.Ed.2d 141 (1975) (respondent's decision to call investigator to testify at trial waived work product protection with respect to matters covered in the testimony). But Plaintiff is wrong on the facts. The expert report at issue relied solely on the December 1999 tests, and the results of that test were already disclosed by Defendants. (See Doc. # 69 exh. 39.)³

Plaintiff's second argument-that Mr. Varroy's testimony waived any work product protection as to its subject matter-also lacks merit. Plaintiff incorrectly asserts that United States v. Nobles, 422 U.S. 225, 95 S.Ct. 2160, 45 L.Ed.2d 141 (1975), dictates that Defendants waived work product protection. In Nobles, the defendant waived work product protection by calling an investigator at trial whose reports would otherwise have been protected by the work product doctrine. Here, it is true that Defendants' counsel elicited opinion testimony at deposition from its expert, Mr. Varroy, regarding tests that he conducted before December 1999. Defendants, however, have not used this testimony in any way, nor have they designated Mr. Varroy as a testifying expert witness under Federal Rule of Civil Procedure 26(a)(2)(A). As such, Mr. Varroy is a non-testifying expert witness under Federal Rule of Civil Procedure 26(b)(4)(B). The facts known to him and his opinions may not be discovered absent a showing of "exceptional circumstances." Fed.R.Civ.P. 26(b)(4)(B). Just as Plaintiff has not shown undue hardship under Rule 23(b)(3), it also fails to show the "exceptional circumstances" required under Rule 26(b)(4)(B).⁴

B. The Martens Recommendation

The Court will address three categories of AK Steel's objections to the Martens Recommendation: (1) objections to the finding of lack of enablement of claims 1, 3, 5, and 7 of the '549 patent; (2) objections to the findings of noninfringement of the patent claims involving the composition of the aluminum bath; and (3) objections to the findings of noninfringement of the patent claims involving the composition and location of the protective atmosphere.

1. Lack of Enablement

Special Master Martens found that claims 1, 3, 5, and 7 of the '549 patent were invalid for lack of enablement. (Doc. # 201 at 84-87.) A patent specification is enabling if it discloses sufficient information to allow a person skilled in the art at the time the application was filed to make and use the claimed invention without undue experimentation. Adang v. Fischhoff, 286 F.3d 1346, 1355 (Fed.Cir.2002); see 35 U.S.C. § 112. "[E]nablement is a question of law ... which may involve subsidiary questions of fact." In re Epstein, 32 F.3d 1559, 1568 (Fed.Cir.1994). A patent is presumed to be valid, 35 U.S.C. § 282, and is therefore presumed to satisfy the enablement requirement. Given this presumption, the burden is on Defendants to show lack of enablement by clear and convincing evidence. Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed.Cir.1999).⁵

AK Steel first argues that claims 1, 3, 5, and 7 are enabled because the '549 patent discloses at least one claimed enablement-namely, it discloses a...