Anglefix, LLC v. Wright Med. Tech., Inc.

• Decision Date: 12 July 2017
• Docket Number: No. 13-cv-2407-JPM-tmp,13-cv-2407-JPM-tmp
• Parties: ANGLEFIX, LLC, and THE UNIVERSITY OF NORTH CAROLINA Plaintiffs, v. WRIGHT MEDICAL TECHNOLOGY, INC., Defendant.
• Court: U.S. District Court — Western District of Tennessee

ANGLEFIX, LLC, and THE UNIVERSITY OF NORTH CAROLINA Plaintiffs, v. WRIGHT MEDICAL TECHNOLOGY, INC., Defendant.

No. 13-cv-2407-JPM-tmp

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF TENNESSEE WESTERN DIVISION

July 12, 2017

ORDER CLARIFYING CLAIM CONSTRUCTION ORDER AND GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTION TO PRECLUDE AS AN EXPERT AND THE REPORTS OF MATTHEW DAVIES AND DENYING PLAINTIFF'S MOTION FOR LEAVE TO FILE SUR-REPLY AS MOOT

This case concerns alleged infringement of United States Patent No. 6,955,677 (the "'677 Patent"). Before the Court is Defendant Wright Medical Technology, Inc.'s Motion to Strike the Expert Reports of Matthew Davies and Preclude Him from Offering Expert Testimony in this Case, filed on May 31, 2016. (ECF No. 154.) Plaintiffs filed a response on June 27, 2016. (ECF No. 170.) Defendant filed a reply on December 5, 2016. (ECF No. 202.) Plaintiffs then moved for file a sur-reply on December 5, 2016. (ECF No. 203.) For the reasons stated below, the Court clarifies its Claim Construction Order, and GRANTS in part and DENIES in part Defendant's Motion to Strike the Expert Reports of Matthew Davies and Preclude Him from Offering Expert Testimony in this Case (ECF No. 154). The Court also DENIES as moot Plaintiffs' Motion for Leave to File Sur-Reply Brief in Opposition to the Motion to Strike the Expert Reports of Matthew Davies (ECF No. 203).

I. ABBREVIATED PROCEDURAL BACKGROUND

Defendant Wright Medical Technology, Inc. filed a Motion to Strike the Expert Reports of Matthew Davies and Preclude Him from Offering Expert Testimony in this Case on May 31, 2016. (ECF No. 154.) Plaintiff filed a response in opposition on June 26, 2016. (ECF No. 170.) Following a Court-ordered stay, Defendant sought leave to file a reply on November 23, 2016. (ECF No. 195.) The Court granted leave on December 2, 2016. (ECF No. 201.) On December 5, 2016, Plaintiff, along with newly joined co-plaintiff the University of North Carolina, moved for leave to file a sur-reply to Defendant's reply concerning Expert Matthew Davies. (ECF No. 203.) Defendant filed a response in opposition to this request, stating that Plaintiffs failed to comport with multiple local rules, e.g., failure to consult prior to filing, and that Plaintiffs' motion failed to cite any authority. (ECF No. 205.)

The Court then scheduled an in-person motion hearing for January 26, 2017 (rescheduled later to January 31, 2017 (ECF No. 215)) to discuss pending motions before the Court. (ECF No. 212.)

II. DISCUSSION

Defendant moves to strike Davies as an expert along with his expert reports because Davies "lacks the required qualifications and expertise to testify on the issues of infringement and validity of United States Patent No. 6,955,677 and, in forming his opinions, failed to apply the claim constructions set forth by the Court's December 30, 2015 Claim Construction Order." (ECF No. 154 at PageID 4926.) Defendant makes two primary arguments against Davies: (1) Davies does not qualify as an expert because he testified that he is not an expert on matters related to the technology at issue, and (2) Davies's expert reports disregard the Court's Claim Construction, and thus they are inadmissible.

First, Defendant asserts that Davies "testified that he is not an expert and is not qualified to opine on matters related to the technology at issue" in a previous matter where he was deposed as a fact witness. (Id. at PageID 4930 (citing AngleFix Tech, LLC v. Smith & Nephew, Inc., Case No. 13-CV-02281 (W.D. Tenn.).) Defendant also contends that in Davies's previous deposition, "Davies testified that he lacked the qualifications and expertise needed to explain how the various prototype 'concepts' on which he consulted for AngleFix differed from each other or whether they were within the scope of the invention claimed by the '677 Patent." (Id.) Defendant avers that allowing Davies to inform the jury would be an abuse of discretion by the Court under Federal Circuit precedent. (Id. at PageID 4931 (citing Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008); Centricut, LLC v. ESAB Group, Inc., 390 F.3d 1361 (Fed. Cir. 2004), cert. denied 546 U.S. 814 (2005)).

Second, Defendant asserts that Davies improperly and "repeatedly disregarded the Court's Claim Construction Order, applying his own inconsistent claim constructions in an effort to support AngleFix's infringement and validity positions." (Id. at PageID 4930) Defendant avers that Federal Circuit precedent precludes claim construction inconsistent with the Court's claim construction order as irrelevant and inadmissible. (Id. at PageIDs 4931, 4943 (citing Intellectual Sci. & Tech., Inc. v. Sony Elecs., Inc., 589 F.3d 1179, 1183 (Fed. Cir. 2009)).) For example, Davies states that a thread "is a structure or 'feature' of a part, typically helical or a partial helix, which allows for interaction with another part in a specified mechanical way." (Id. at PageID 4943 (citing Davies Report ¶ 16) (internal quotation marks omitted).) Defendant contends that this definition starkly contrasts with the Court's definition of "non-threaded" as "'without a continuous or intermittent helical feature on the inner surface of the hole . . . .'" (Id. (citing ECF No. 93 at 22).) Defendant further asserts the Courtdirectly foreclosed a construction that included partially non-helical threads in its Claim Construction Order. (Id. (citing ECF No. 93 at 21).) Defendant also contends that Davies's determination that Defendant's accused products are "non-threaded" because the "broken helical ridges" of these products "permit both on-axis and off-axis insertion of a locking screw . . . was [also] expressly rejected by the Court in its Claim Construction Order." (Id. at PageID 4944.) Defendant argues that Davies goes on to incorrectly construe the claim terms "tappable contract region," "protrusions," and "tapping," which should also be stricken. (Id. at PageIDs 4945-48.)

Plaintiffs respond that Davies is qualified as an expert and that he properly relied on the Court's Claim Construction in his reports. (ECF No. 170 at PageIDs 6228-40.) Plaintiffs first assert that Davies served as a third-party fact witness in the case cited by Defendant, and thus his "statements that 'I am not an expert' in 2014, during his fact deposition was a confirmation of counsel's objections to questions seeking to elicit opinion testimony from" him. (Id. at PageID 6229.) In short, Plaintiffs assert that

Davies never testified that he lacked the qualifications and expertise needed to explain how the various prototype 'concepts' on which he consulted for AngleFix differed from each other or whether they were within the scope of the invention claimed by the '677 Patent. [He] simply stated that [he] had never performed such analysis.

(Id. at PageID 6233.) In other words, Plaintiffs argue Davies was not acting as an expert in the previous matter, and his "I am not an expert" language does not preclude him from being an expert in this case.

Plaintiffs also assert that Davies's reports conform to Federal Rule of Evidence 702, arguing that the reports incorporate the Court's Claim Construction Order and are admissible.(Id. at PageIDs 6234, 6240.) Plaintiffs further contend that "[a]n expert is not a person of ordinary skill in the art, he simply needs to view and evaluate the patent and the prior art from the viewpoint of one of ordinary skill in the art." (Id. at PageID 6237.) Nonetheless, Plaintiffs argue that although Davies did not have the education and experience of one of ordinary skill in the art in 2002, he had acquired this status by 2006, and precedent does not require "that an expert must have been a person of ordinary skill at the time of the invention." (Id. at PageIDs 6238-39.)

Defendant then replies that Davies should be precluded as an expert and his reports stricken for four reasons. First, Defendant argues that Plaintiffs do not address Davies's incorrect claim constructions, and thus Davies's claim constructions should be stricken. (ECF No. 202 at PageID 6904.) Second, Defendant contends that Davies must have possessed ordinary skill in the art as of invention priority date (2002), and because Plaintiffs concede Davies was not, Davies is disqualified as an expert under Federal Circuit precedent. (Id. (citing Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1361, 1363 (Fed. Cir. 2008); Extreme Networks, Inc. v. Enterasys Networks, Inc., 395 Fed.Appx. 709, 715 (Fed. Cir. 2010)).) Third, Defendant asserts that Davies's sworn statements that he was not an expert disqualify him as an expert in this case because he was unfamiliar with the '677 patent and the relevant technology at the time of his 2014 deposition in the Smith & Nephew litigation. (Id. at PageID 6905-06.) Fourth, Defendant contends that Plaintiffs' "[o]pposition was filed ten days late and without leave of Court in violation of the Local Rules and the Court's Orders." (Id. at PageID 6906.) Defendant contends that this late filing cuts against the Court's previous Order, which stated that "[b]oth parties are ORDERED to adhere strictly to all future deadlines. Any extensions of time or other relief must be requested before therelevant deadline." (ECF No. 115.) The Court addresses each of the Defendant's arguments in turn.

A. Davies's Qualifications and Previous Testimony as a Fact Witness

Defendant contends that Davies is disqualified as an expert because he did not possess ordinary skill in the art as of the invention priority date (2002) (ECF No. 202 at PageID 6904), and because he made previous sworn statements that he was not an expert (id. at PageIDs 6905-06).

Defendant relies on the Federal Circuit's rulings in Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, at 1361, 1363 (Fed. Cir. 2008) and Extreme Networks, Inc. v. Enterasys Networks, Inc., 395 Fed. Appx. 709, 715 (Fed. Cir. 2010) for the proposition that an expert must...