Motion to Strike Declaration of Defendants’ Expert Granted

Chemfree Corp. v. J. Walter, Inc. et al., Case No. 1:04-CV-3711 (N.D. Ga. Aug. 28, 2008) (Camp, J.)

Between February and April 2008, Defendants filed an initial report, a rebuttal report and a reply report from their testifying expert pursuant to the expert-disclosures schedule set forth in the Local Patent Rules. In June 2008, Defendants submitted a declaration from their expert in support of their motion for summary judgment of non-enablement. Plaintiff moved to strike the declaration as an unauthorized supplemental expert report.

Declaration Qualified as a Supplemental Expert Report: The Court granted the motion, finding that (1) the summary judgment declaration qualified as an additional expert report that supplemented the expert’s previous opinions, and (2) the additional expert report was untimely and prejudicial to Plaintiff. Specifically, the Court noted that the declaration stated “it is my opinion that” or “in my opinion” at least twenty-seven times and concluded by stating “I continue to be of the opinion that . . . .” Based on these statements, the Court deemed the declaration to be an amendment or supplementation to the expert’s initial report. As such, the declaration was subject to Local Patent Rule 7.3 which provides that:

Because of the complexity of the issues often present in patent cases, amendments or supplementation to expert reports after the deadlines provided here are presumptively prejudicial and shall not be allowed unless (a) the tendering party shows cause that the amendment or supplementation could not reasonably have been made earlier and (b) all reasonable steps are made to ameliorate the prejudice to the responding party.

Because Defendants failed to make the necessary showing under Local Patent Rule 7.3, the Court granted Plaintiff’s Motion to Strike Defendants’ summary judgment declaration.

Motion to Strike Supplemental Infringement Contentions Granted

Outside the Box Innovations, LLC d/b/a Union Rich USA v. Travel Caddy, Inc. et al., Case No. 1:05-CV-02482 (N.D. Ga. Aug. 26, 2008) (Evans, J.)

Plaintiff Union Rich seeks a declaratory judgment that its products do not infringe Defendant Travel Caddy’s patents relating to tool bags. In February 2006, Travel Caddy filed its infringement contentions under the Local Patent Rules and identified two Union Rich products as infringing. In May and August 2006, during depositions of Union Rich employees, Travel Caddy learned of two other products that Union Rich was seeking to manufacture for a third-party, Johnson Level. It was not until January 2008, however, that Travel Caddy filed supplemental infringement contentions to identify the Johnson Level tool bags as accused products. Union Rich moved to strike Travel Caddy’s supplemental contentions as untimely.

Must Show Good Cause for Delay: Judge Evans granted the motion, finding that Travel Caddy had not made a showing of good cause, required under the Local Patent Rules, for its delay in amending its infringement contentions. Travel Caddy argued that its delay was justified because it had only recently discovered evidence that Union Rich sold the tool bags to Johnson Level. The Court, however, determined that Travel Caddy should have supplemented its infringement contentions promptly after learning, in May 2006, “about the possibility that Union Rich might sell these two products to Johnson Level.” Accordingly, the Court directed that Travel Caddy’s supplemental infringement contentions be stricken from the docket.

New Northern District of Georgia Patent Cases

• Graywire, LLC v. Ciena Corp., Cisco Systems, Inc., JDS Uniphase Corp., Newport Corp., & Palomar Technologies, Inc., Case No. 1:08-cv-02993 (N.D. Ga. Sept. 24, 2008) (Martin, J.) – Patent infringement suit involving U.S. Patent Nos. 6,542,673 (Identifier System and Components for Optical Assemblies); 6,542,660 (Method and System for Increasing a Number of Information Channels Carried by Optical Waveguides); and 6,415,082 (Optical Networking Assembly). Plaintiff is represented by King & Spalding LLP of Atlanta.

New Northern District of Georgia Patent Cases

• Winfrey v. Kimberly-Clark Corp., United States Patent and Trademark Office, Dudas, & Weiss, Case No. 1:08-cv-02817 (N.D. Ga. Sept. 9, 2008) (Thrash, Jr., J.) - Suit to correct inventorship and for theft of trade secrets. Plaintiff is proceeding pro se. This case is related to a previously-filed suit, Case No. 1:08-cv-1678, which was dismissed after Judge Thrash found the Plaintiff’s claims to be time-barred.
• Data:)Comm Electronics, Inc. v. HD-Products, Inc., (Powerbridge Solution), Case No. 1:08-cv-02827 (N.D. Ga. Sept. 9, 2008) (Trash, Jr. J.) - Patent infringement suit involving U.S. Patent No. 7,390,964 (Wall Plate with Integral Nose for Electrical Cable) and U.S. Design Patent No. 554,475 (same). Plaintiff is represented by Thomas Kayden Horstemeyer & Risley of Atlanta.
• Ecosmart Techs., Inc. v. Green Light Co. & Southwest Contract Packaging, Inc., Case No. 1:08-cv-02898 (N.D. Ga. Sept. 16, 2008) (Evans, J.) - Patent infringement suit involving U.S. Patent No. 6,004,569 (Non-Hazardous Pest Control). Plaintiff is represented by Parker Hudson Rainer & Dobbs LLP of Atlanta.