Sd3, LLC v. Dudas ( 2014 )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
)
SD3, LLC, )
)
Plaintiff, )
)
v. ) Civil No. 08-1242 (RCL)
)
TERESA STANEK REA, (Acting) Director, )
United States Patent & Trademark Office )
)
Defendant. )
)
MEMORANDUM OPINION
Plaintiff SD3, LLC has sued for a patent on its saw-stopping safety technology. In short,
SD3 claims that it has invented a new way to stop a saw blade almost instantaneously in the
event of a stray finger, or other unsafe condition, entering its path. The government disagrees
and the PTO denied SD3’s patent application on the ground that it was anticipated by a 1974
patent that described a similar piece of technology. Now, SD3 moves for summary judgment
and to exclude defendant’s (“the Director’s”) expert witnesses. SD3 also asks that the Court
exclude the most recent declaration of one of the Director’s experts, Dr. Charles F. Landy, as
untimely filed. For the following reasons, SD3’s motion is denied in all respects. However, the
Court will briefly reopen discovery so that SD3 may again depose Dr. Landy solely on the
subject of his late filed declaration if it so chooses.
I. BACKGROUND
The factual and procedural background of this case is substantially set out in the Court’s
July 8, 2013 memorandum opinion regarding the Director’s earlier motion for summary
judgment. SD3, LLC v. Dudas, 952 F. Supp. 2d 97 (D.D.C. 2013). A brief summary of that
background relevant to decision on this motion is provided below.
A. SD3 Patent Application
SD3 applied for a patent on its saw stopping technology in 2002, defining its invention in
two claims at issue in this case, claim 1 and claim 30. The claims state:
1. A machine comprising:
an operative structure adapted to perform a task, where the operative
structure includes a mechanical cutting tool adapted to move in at least one
motion; and
a safety system adapted to detect the occurrence of an unsafe condition
between a person and the cutting tool, where the safety system includes a
detection subsystem adapted to detect the unsafe condition, and a reaction
subsystem adapted to mitigate the unsafe condition;
where the reaction subsystem includes a brake mechanism adapted to stop
at least one motion of the cutting tool within 10 milliseconds after detection of the
unsafe condition.
30. The machine of claim 1 where the brake mechanism is adapted to stop at least
one motion of the cutting tool in less than 5 milliseconds after detection of the
unsafe condition.
Administrative Record (excerpts) at 836, 838, ECF No. 35-3. The Patent Examiner
rejected claim 1 as lacking novelty under 35 U.S.C. § 102(b) and rejected claim 30 as
obvious under 35 U.S.C. § 103(a). Ex parte Gass, No. 2007-4061, 2008 WL 2195265, at
*1 (B.P.A.I. May 27, 2008). The prior art relied upon in so holding was U.S. Patent
3,858,095, which identifies inventors Wolfgang Friemann and Josef Proschka (“the
Friemann patent”). Id.; U.S. Patent 3,858,095 (filed Aug. 1, 1973) (issued Dec. 31,
1974). In the words of the Bureau of Patent Appeals and Interferences, the Friemann
patent, similar to SD3’s claimed invention, “discloses a machine including an operative
structure adapted to perform a task, where the operative structure includes a mechanical
cutting tool 5 adapted to move in at least one motion and a safety system adapted to
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detect the occurrence of an unsafe condition between a person and the cutting tool, where
the safety system includes a detection subsystem 3 adapted to detect the unsafe
condition.” Ex parte Gass, 2008 WL 2195265, at *2 (internal citations omitted); see ’095
Patent. The patent discloses that its safety system includes a braking mechanism adapted
to stop a cutting tool within 10 milliseconds after detection of the unsafe condition. ’095
Patent, col. 4 ll. 5–6. It also discloses that experiments had shown that by using a
protective circuit arrangement along the lines of the claimed invention, it was possible to
stop a cutting tool in about 5 milliseconds. Id. at col. 2 ll. 15–20.
The BPAI affirmed the Examiner as to claim 1, finding that SD3 had failed to
establish that the Friemann patent did not enable a person of ordinary skill in the art to
make or carry out the claimed invention without undue experimentation. Ex parte Gass,
2008 WL 2195265, at *4. It also affirmed the Examiner’s finding with respect to claim
30, stating that SD3 failed to provide any substantial evidence to support the argument
that “the claimed limitation”—of stopping a blade in less than 5 milliseconds, rather than
10 milliseconds—was “not a variable that can be optimized by the use of routine skill in
the art and that it is a significant and difficult issue to adapt a brake mechanism to operate
in the recited time scale.” Id. at *6.
B. Present Litigation and Motion for Summary Judgment
SD3 filed suit pursuant to 35 U.S.C. § 145, seeking a reversal of the BPAI’s decision and
the award of a patent on claims 1 and 30. Compl., ECF No. 1. The Director later moved for
summary judgment, ECF No. 7, which the Court denied after finding that SD3 had presented
sufficient evidence to raise a genuine issue of material fact regarding its entitlement to a patent.
SD3, LLC, 952 F. Supp. 2d at 97. At that time, the Director had presented no additional evidence
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in support of its position, beyond the language of the Friemann patent, the findings of the BPAI
and Examiner, and legal presumptions discussed below. Id. at 103. Now, SD3 moves to exclude
the expert witnesses the Director has since put forward, in addition to moving for summary
judgment. Pl.’s Mem. of Points and Authorities in Supp. of its Mot. to Exclude Expert Ops. and
for Summ. J. 1–2, ECF No. 34-1 (“Pl.’s Mot.”).
II. REQUEST TO EXCLUDE DR. LANDY DECLARATION
Before the Court can consider SD3’s motion to exclude expert opinions and for summary
judgment, it must determine whether to exclude the Declaration of Dr. Charles F. Landy,
submitted by the Director as an attachment to its response in opposition to SD3’s motion on
August 25, 2014. Dr. Charles F. Landy Decl., ECF No. 35-11. SD3 presents a laundry list of
arguments for its exclusion, namely that it was filed late without justification, it does not correct
prior testimony, its inclusion would be prejudicial to SD3, and that it is misleading and
unhelpful. Pl.’s Reply Mem. to Def.’s Opp’n 13, ECF No. 36.
A party must make disclosures regarding its expert witnesses in written reports setting
forth, inter alia, each expert’s opinions, the basis for those opinions, and the facts or data
considered in forming them. Fed. R. Civ. P. 26(a)(2)(B). These disclosures must occur “at the
times and in the sequence that the court orders.” Fed. R. Civ. P. 26(a)(2)(D). The most recent
scheduling order in this case states that “[d]iscovery concerning PTO expert’s review of
documents produced by plaintiff on May 23, 2014, and any supplemental report he provides, will
close on June 20, 2014.” Scheduling Order, May 30, 2014, ECF No. 33. All other discovery
closed on May 30, 2014. Id. Therefore, all expert disclosures must have occurred by June 20,
2014 in this case to comply with the Court’s Scheduling Order.
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To the extent required by Rule 26(e), a party must supplement its expert disclosures.
Fed. R. Civ. P. 26(a)(2)(E). Rule 26(e) requires supplementing disclosures when a “party learns
that in some material respect the disclosure or response is incomplete or incorrect, and if the
additional or corrective information has not otherwise been made known to the other parties
during the discovery process or in writing.” Fed. R. Civ. P. 26(e)(1)(A). As applied to expert
witnesses, “the party’s duty to supplement extends both to information included in the report and
to information given during the expert’s deposition.” Fed. R. Civ. P. 26(e)(2). This rule
provides a “limited exception” to the deadlines for expert reports imposed by Rule 26(a)(2).
Richardson v. Korson, 905 F. Supp. 2d 193, 199 (D.D.C. 2012). It “does not grant a license to
supplement a previously filed expert report because a party wants to.” Id. (quoting Estate of
Gaither ex rel. Gaither v. District of Columbia, Civil Action No. 03-1458, 2008 WL 5869876, at
*3 (D.D.C. Oct. 23, 2008)). As interpreted by decisions of this district, Rule 26(e)’s exception is
“narrow” and only permits supplemental reports for the purpose of “correcting inaccuracies or
adding information that was not available at the time of the initial report.” Minebea Co. v. Papst,
231 F.R.D. 3, 6 (D.D.C. 2005).
Rule 37(c)(1) provides that a failure to disclose according to the requirements of Rule
26(a) or (e) causes the exclusion of the information not disclosed “unless the failure was
substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1). An important consideration in
determining whether a failure to disclose was harmless is whether the late filed report is
submitted well in advance of trial, leaving the opposing party time to adjust its trial preparation
in light of the new information provided regarding the expert’s opinion. Dormu v. District of
Columbia, 795 F. Supp. 2d 7, 28 n.16 (D.D.C. 2011). Another key consideration in determining
the prejudicial impact of the late disclosure is whether discovery can be briefly reopened to allow
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the opposing party to depose the expert in response to the supplement. Richardson, 905 F. Supp.
2d at 200. Also, in determining the harmlessness of a late filed report, the Court should consider
whether the proposed supplement would offer entirely new opinions or fundamentally change the
opinions already offered or would merely supplement and fill in the gaps of a previous
disclosure. Compare Dormu, 795 F. Supp. 2d at 28 n.16 (concluding that the “supplemental
affidavit sets forth references, not new opinions, and therefore does not blindside defendants
with new information”), with Dag Enters., Inc. v. Exxon Mobil Corp., 226 F.R.D. 95, 109
(D.D.C. 2005) (observing that plaintiffs’ proposed supplemental filing was not a “typical
supplementation” because it sought to entirely “change the substance of their contentions”).
Dr. Landy states that his declaration was required to respond to calculations presented to
him by SD3’s counsel in his most recent deposition, calculations based on assumptions he was
not previously aware of. Landy Decl. ¶¶ 4, 10. Therefore, the Director contends that Dr.
Landy’s disclosure is permitted under Rule 26(e)(1) and (e)(2). In response to these
calculations—and questions about them during his deposition—Dr. Landy located a band-saw
which, he argues, demonstrates that a system enabled by the Friemann patent could achieve the
claimed stopping times. Id. ¶ 9.
This new saw and its substantiation of Dr. Landy’s opinions is precisely the type of
bolstering of expert opinion that Rule 26(e) does not contemplate. See Wannall v. Honeywell
Int’l, Inc., 292 F.R.D. 26, 35 (D.D.C. 2013) (internal citations omitted). Dr. Landy did not
merely correct inaccuracies in his deposition testimony; he found additional evidence that further
substantiated his previously stated expert opinions. Furthermore, Dr. Landy did not state why he
had not previously located a saw of the type referred to in his supplement. The saw located was
manufactured over 20 years ago. Landy Decl. ¶ 9 n.2. Thus, Dr. Landy’s declaration was not
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justified on the basis of receiving new information not previously available to him. Having
satisfied neither of the “narrow” purposes of Rule 26(e), the Court concludes that Dr. Landy’s
declaration is an untimely filed expert disclosure. See Minebea Co., 231 F.R.D. at 6.
The prejudice accruing to SD3 as a result of this late filing, however, can be minimized.
First, no date for trial has been set. Therefore, SD3 has ample opportunity to internalize the new
information provided by Dr. Landy into its trial strategy. See Dormu, 795 F. Supp. 2d at 28 n.16
(holding that prejudice may be sufficiently cured when disclosure is made well in advance of
trial). Also, the Court will briefly and narrowly reopen discovery for the purpose of allowing
SD3 to depose Dr. Landy solely regarding this declaration, if it so chooses. See Richardson, 905
F. Supp. 2d at 200 (holding that prejudice may be cured by allowing the opposing party an
opportunity to depose an expert regarding a late filed disclosure). Finally, the opinions offered
by Dr. Landy are not a substantial alteration of his prior opinions that would blindside SD3;
instead, they merely provide further support for his prior contentions. Cf. Dormu, 795 F. Supp.
2d at 28 n.16 (finding reduced prejudice where a late filed disclosure merely provided new
references for an expert’s opinions).
The Court notes that the parties should not take the Court’s permissiveness in this
instance as a license to make further late filings regarding their expert witnesses. Indeed, the
disruption to a court’s efficient management of a case caused by late filings of this type is a key
consideration in dealing with an issue like this. Richardson, 905 F. Supp. 2d at 200.
Nonetheless, in this instance, given that any prejudice to SD3 may be sufficiently cured, the
Court will not exclude Dr. Landy’s declaration and will consider it as part of the record on SD3’s
motion.
III. MOTION TO EXCLUDE EXPERT OPINIONS
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SD3 moves to exclude the Director’s experts, Dr. Landy and Michael Gililland. It argues
that their testimony is unreliable because based only on the subjective belief that the Friemann
patent accurately and honestly reported that experiments were conducted stopping a saw blade
within the claimed time limits. Pl.’s Mot. 14, 17. SD3 argues on this basis that Dr. Landy and
Gililland should be excluded pursuant to the Court’s role as initial gatekeeper before expert
testimony may reach the trier of fact.
A. Legal Standard
Federal Rule of Evidence 702 provides:
A witness who is qualified as an expert by knowledge, skill, experience, training,
or education may testify in the form of an opinion or otherwise if: (a) the expert’s
scientific, technical, or other specialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in issue; (b) the testimony is based
on sufficient facts or data; (c) the testimony is the product of reliable principles
and methods; and (d) the expert has reliably applied the principles and methods to
the facts of the case.
Fed. R. Evid. 702.
Pursuant to this rule, trial judges act as “gatekeepers” and must “exclude unreliable
expert testimony.” United States ex rel. Miller v. Bill Harbert Int’l Constr., Inc., 608 F.3d 871,
894 (D.C. Cir. 2010). In the context of scientific expert testimony, the Supreme Court has
outlined four illustrative factors for determining reliability: (1) whether the theory or technique
underlying the testimony has been or can be tested, (2) whether it has been subjected to the peer
review and publication process, (3) its known or potential rate of error, and (4) its “general
acceptance” in the relevant scientific community. Daubert v. Merrell Dow Pharms., Inc., 509
U.S. 579, 593–94 (1993). In the case of technical or non-scientific expert testimony, such as that
presented by Dr. Landy and Gililland, a trial judge should apply the Daubert factors to the extent
relevant to determining a particular expert’s reliability. Kumho Tire Co. v. Carmichael, 526 U.S.
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137, 152–53 (1999). The trial judge has substantial discretion, however, in determining whether
an expert’s testimony is reliable. Id. A court also has substantial discretion in determining how
best to make that reliability finding in any given case. Id.When the judge will serve as factfinder in a trial, the gatekeeping requirement is
substantially relaxed. United States v. H & R Block, Inc., 831 F. Supp. 2d 27, 30 (D.D.C. 2011)
(quoting Whitehouse Hotel Ltd. P’ship v. Comm’r of Internal Revenue, 615 F.3d 321, 330 (5th
Cir. 2010)) (holding that, without the danger of “tainting the trial by exposing a jury to unreliable
evidence,” the importance of the court’s role as gatekeeper is greatly reduced). This is because
“[w]here the gatekeeper and the factfinder are one and the same—that is, the judge—the need to
make such decisions [regarding reliability] prior to hearing the testimony is lessened.” In re
Salem, 465 F.3d 767, 777 (7th Cir. 2006) (citing United States v. Brown, 415 F.3d 1257, 1268–
69 (11th Cir. 2005)); see also United States v. Wood, 741 F.3d 417, 425 (4th Cir. 2013). This is
not to say that expert testimony in this situation need be any less reliable; it simply means that
“the court can hear the evidence and make its reliability determination during, rather than in
advance of trial.” In re Salem, 465 F.3d at 777.
B. Analysis
SD3 has argued that the Director’s experts should be excluded on the ground that their
testimony is not reliable. SD3’s sole argument for unreliability is that the expert opinions of Dr.
Landy and Gililland are not based on scientific analysis but only on their acceptance of the
Friemann patent’s statements that experiments were conducted, achieving the stopping times
referred to. Pl.’s Mot. 14, 17. The Court notes that SD3 has not challenged the qualifications of
the Director’s experts and does not reach that issue.
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The Court finds that the Director’s experts should not be excluded. The opinions, as
represented by the submitted expert reports, regard how a person of ordinary skill in the art
would understand what the Friemann patent teaches. See, e.g., Michael L. Gililland Report ¶ 24,
ECF No. 35-4; Dr. Charles F. Landy Addendum Report 2–3, ECF No. 35-8. This is a topic fit
for expert opinion. See Arthrocare Corp. v. Smith & Nephew, Inc., 406 F.3d 1365, 1373–74
(Fed. Cir. 2005) (holding that patent claims were anticipated by an earlier patent and citing
testimony by an expert witness who opined on how a person of ordinary skill in the art would
understand the teachings of that earlier patent); Motorola, Inc. v. Interdigital Tech. Corp., 121
F.3d 1461, 1473 (Fed. Cir. 1997) (holding that a verdict of anticipation was properly supported
by expert testimony regarding how a person of ordinary skill would understand a prior art
reference).
Furthermore, Dr. Landy and Gililland’s expert opinions are not entirely based on the
subjective belief that experiments were conducted demonstrating that a system enabled by the
Friemann patent was capable of achieving the described stopping times. Instead, their proposed
testimony primarily provides opinions regarding the flaws in SD3’s impossibility argument and
relies on technical literature and their technical experience in so arguing. See, e.g., Landy Decl.
¶ 9 (performing calculations regarding the braking torque required to stop a blade using various
components discovered through research and assumptions derived from knowledge of saw
operation); Gililland Report ¶¶ 18–21, 24–25, 27 (discussing saw components discovered in
research that arguably contradict assumptions made by SD3’s experts and relying on research
and experience to reject opinions offered by SD3’s experts regarding stopping torque required in
a system enabled by the Friemann patent); Dr. Charles F. Landy Report 6–13, ECF No. 35-5
(assessing SD3’s expert reports in light of, for example, his reading of the patents at issue, a
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technical research paper, and “[his] experience of having developed induction motor design
programs and from having predicted and measured the transient torques produced in numerous
motors during reswitching operations”).
This type of opinion testimony is considered sufficiently reliable to survive a motion to
exclude. Cf. S.E.C. v. Johnson, 525 F. Supp. 2d 66, 69 n.3 (D.D.C. 2007) (finding admissible
expert testimony regarding industry custom that was “drawn from many years of experience”
and “derived from significant research”); Heller v. District of Columbia, 952 F. Supp. 2d 133,
141 (D.D.C. 2013) (internal citation and quotation marks omitted) (observing a variety of cases
where experience formed the primary basis of expertise and concluding that a method of
“observ[ing] the relevant evidence and appl[ying] their specialized knowledge to the case at
hand” was reliable). Dr. Landy and Gililland appear to have evaluated the Friemann patent, the
reports of SD3’s experts, and their knowledge derived from experience and research to form
their opinions regarding (1) problems in SD3’s expert reports and (2) what is possible in a
system enabled by the Friemann patent in the hands of a person of ordinary skill in the art.
SD3’s arguments that Dr. Landy and Gililland’s criticisms and opinions do not change the
outcome of this case are not reasons to exclude that testimony; such arguments go to the weight
to be accorded that testimony, not its admissibility. See id. at 142–43 (citing cases).
Additionally, the reduced importance of the gatekeeping function when the court will
serve as factfinder, as is the case here, further shows that the Director has sufficiently
demonstrated the reliability and helpfulness of its experts’ proposed testimony to survive a
motion to exclude. See H & R Block, Inc., 831 F. Supp. 2d at 30. If this suit ultimately reaches
trial, the Court may at that time further assess the reliability of these experts’ testimony and the
proper weight to give it. See In re Salem, 465 F.3d at 777.
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IV. MOTION FOR SUMMARY JUDGMENT
SD3 also moves for summary judgment on the ground that it is physically impossible for
the Friemann patent to enable creation of a system that could stop a blade in the time specified in
SD3’s claims. Pl.’s Mot. 26–29. Therefore, SD3 contends that there is no genuine issue of
material fact as to enablement and SD3 is entitled to judgment as a matter of law. Id.
A. Legal Standard
1. Summary judgment
“The court shall grant summary judgment if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.
R. Civ. P. 56(a). A motion for summary judgment is only defeated by a “genuine” dispute as to
a “material” fact; the “mere existence of some alleged factual dispute” is not enough. Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 247–48 (1986). Material facts are those which could affect
the outcome of a case, as determined by the substantive law underlying the suit. Id. at 248. A
dispute is genuine if the “evidence is such that a reasonable jury could return a verdict for the
nonmoving party.” Id.When the moving party would bear the burden of proof at trial, it “must support its
motion with credible evidence—using any of the materials specified in Rule 56(c)—that would
entitle it to a directed verdict if not controverted at trial.” Celotex Corp. v. Catrett, 477 U.S. 317,
331 (1986). In response, the nonmoving party must present specific facts, beyond mere
allegations or conclusory statements, that would enable a reasonable jury to find in its favor.
Anderson, 477 U.S. at 256.
2. 35 U.S.C. § 102 – Anticipation
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35 U.S.C. § 102(b) states that a person shall not be entitled to a patent if “the invention
was patented or described in a printed publication in this or a foreign country . . . more than one
year prior to the date of the application for patent in the United States.” 35 U.S.C. § 102(b)
(2006).1 Under this provision, a person is not entitled to a patent if “the same invention,
including each element and limitation of the claims, was known or used by others” before the
date of the patent application. Hoover Grp., Inc. v. Custom Metalcraft, Inc., 66 F.3d 299, 302
(Fed. Cir. 1995). This ground for rejecting a patent application, based on lack of novelty, is
often referred to as “anticipation.” Id. Anticipation is a question of fact. Elan Pharms., Inc. v.
Mayo Found. for Med. Educ. & Research, 346 F.3d 1051, 1054 (Fed. Cir. 2003).
Prior art must be enabling to serve as an anticipating reference. Id. To enable a claimed
invention, “the prior art reference must teach one of ordinary skill in the art to make or carry out
the claimed invention without undue experimentation.” Id. (quoting Minnesota Mining and Mfg.
Co. v. Chemique, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002)). The question of “undue
experimentation” is evaluated according to eight factors:
(1) the quantity of experimentation;
(2) the amount of direction or guidance present;
(3) the presence or absence of working examples;
(4) the nature of the invention;
(5) the state of the prior art;
(6) the relative skill of those in the art;
(7) the predictability or unpredictability of the art; and
(8) the breadth of the claims.
Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314–15 (Fed. Cir. 2008) (citing In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). Enablement is a “question of law based upon
underlying factual findings.” Impax Labs., Inc., 545 F.3d at 1315.
1
Section 102 was amended by the Leahy–Smith America Invents Act, Pub. L. 112–29, Sec. 3, 125 Stat. 284 (Sept.
16, 2011). The amended statute does not apply in this case, however, because the patent application at issue was
filed before the Act’s effective date. Id. at Sec. 35.
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When the prior art is a prior publication, the standard for enablement to be applied
“requires a determination of whether one skilled in the art to which the invention pertains could
take the description of the invention in the printed publication and combine it with his own
knowledge of the particular art and from this combination be put in possession of the invention
on which a patent is sought.” In re Sasse, 629 F.2d 675, 681 (CCPA 1980) (internal citation and
quotation marks omitted). Claimed and unclaimed materials in a patent are presumptively
enabling when the Examiner cites them as prior art anticipating a claimed invention. In re Antor
Media Corp., 689 F.3d 1282, 1287 (Fed. Cir. 2012). This presumption applies at the district
court as well. Id. at 1288. Therefore, the burden of proof is initially on the applicant to rebut the
presumption of enablement. In re Sasse, 629 F.2d at 681. If the applicant puts forward evidence
of non-enablement, the burden shifts to the government to “rebut the . . . contention of non-
enablement.” Id. If the government succeeds on this point, the ultimate burden once again rests
with the applicant. Id.
3. 35 U.S.C. § 103 – Obviousness
A patent will not issue “if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art to which said subject
matter pertains.” 35 U.S.C. §103(a) (2006). Where a prior art reference is said to disclose the
claim at issue, the prior art will only render the invention obvious, and therefore unpatentable, if
it “enable[s] a person of ordinary skill to make and use the invention.” In re Kumar, 418 F.3d
1361, 1368 (Fed. Cir. 2005).
B. Analysis
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SD3 argues that the Friemann patent does not enable its claimed invention because it is
physically impossible that a system created using the teachings of the Friemann patent can stop a
saw blade in .10 or .05 milliseconds. Pl.’s Mot. 26–29.
The Court concludes that the Director has sufficiently presented evidence to raise a
genuine issue of material fact as to enablement and, therefore, anticipation and obviousness.
First, the Director’s experts dispute a number of the assumptions underlying SD3’s argument
regarding the physical impossibility of the disclosed blade stopping times in the Friemann patent.
For example, Gililland concludes that Drs. Turcic and Gass have overstated the amount of torque
required to stop the saw’s motor by relying on a calculation based on a 3 horsepower motor
rather than a less powerful one. Gililland notes the existence of 2 horsepower saw motors, one
of which was presented in Dr. Turcic’s report as an example of the motor in a textile cutting
machine. Gililland Report ¶¶ 19–20. Dr. Landy opines that the response time of
electromechanical brakes can be “significantly shortened” by overexciting them, thus stopping
the blade at a faster speed than SD3 contends is possible. Landy Addendum Report 2. The
dispute as to whether SD3’s assumptions are required is material to the question of whether it is
impossible that a system enabled by the Friemann patent could achieve the stopping times
discussed.
Second, the Director’s experts have presented evidence that the Friemann patent’s
disclosed blade stopping times are not physically impossible. For example, Dr. Landy provided
calculations in his declaration for a blade stopping mechanism, allegedly enabled by the
teachings of the Friemann patent, that could achieve the disclosed stopping times. Landy Decl. ¶
9. Indeed, SD3’s argument that summary judgment is proper largely hinges on the absence of
calculations of this very type.
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Finally, the Director and SD3 disagree about whether the Friemann patent teaches a
person of ordinary skill in the art to apply a brake directly to the blade of a saw. Pl.’s Reply 15;
Def.’s Opp’n to Pl.’s Mot. 27–28, ECF No. 35. If the Friemann patent teaches a person of
ordinary skill to apply a brake directly to the saw blade, it would allow for “slippage” in the
system after the blade had already stopped. Id. The calculations of SD3’s experts rely in part on
the premise that Friemann’s patent does not contemplate a braking mechanism that would allow
for slippage. Pl.’s Statement of Material Facts ¶ 3, ECF No. 34-3. Thus, SD3’s physical
impossibility argument relies, in part, on what exactly the Friemann patent teaches regarding a
directly applied brake. The Director’s experts have opined that a braking system could stop one
rotation of a saw blade much faster if slippage were permitted in that system. Landy Addendum
Report 3; Gililland Report ¶¶ 17, 24.
What a prior art reference teaches a person of ordinary skill in the art is a question of fact.
In re Graves, 69 F.3d 1147, 1151 (Fed. Cir. 1995). The Director has, therefore, raised a fact
question on this point as well, regarding what the Friemann patent teaches. The answer to this
question is material to the outcome of this litigation, in light of (1) the importance of the “no
slippage” premise to SD3’s experts’ opinions and (2) the opinions of the Director’s experts
regarding the stopping speed that is possible when a brake is applied directly to the blade. If the
Friemann patent anticipated SD3’s claims by enabling a person of ordinary skill in the art,
without undue experimentation, to create a device capable of achieving SD3’s claims, it must
lose. 35 U.S.C. §§ 102(b), 103 (2006); Elan Pharms., Inc., 346 F.3d at 1054. Therefore,
summary judgment is inappropriate. SD3’s motion is denied.
V. CONCLUSION
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SD3’s motion for summary judgment and to exclude the Director’s expert witnesses is
denied. The Director has sufficiently demonstrated that its experts’ opinions are reliable and
helpful to the Court as trier of fact to survive a motion to exclude. SD3 has failed to demonstrate
that there is no genuine issue of material fact regarding its entitlement to a patent.
The Court will allow the submission of the untimely filed supplemental declaration of Dr.
Landy. In light of the potential prejudice to SD3, however, the Court will briefly reopen
discovery for the limited purpose of allowing SD3 to depose Dr. Landy on this declaration alone,
should it choose to do so.
Counsel for the parties shall appear before the Court at the date and time specified in the
Court’s Order accompanying this Opinion for a status conference regarding this suit. Counsel
should be prepared to discuss a schedule for trial of this matter.
Signed by Royce C. Lamberth, United States District Judge, on October 20, 2014.
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