Free Response to Motion - District Court of Colorado - Colorado

Case 1:03-cv-02372-PSF-PAC

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO

Civil Action No. 1:03-cv-02372-PSF-PAC JACK BARRECA Plaintiff, v. SOUTH BEACH BEVERAGE CO., INC.; LOTTE U.S.A; and 7-ELEVEN, INC. Defendants. ________________________________________________________________________ PLAINTIFF'S RESPONSE TO DEFENDANTS' MOTION IN LIMINE TO PRECLUDE PLAINTIFF FROM TESTIFYING AS AN EXPERT WITNESS ________________________________________________________________________ Plaintiff, by and through his attorneys, responds to Defendants' Motion in limine for the reasons set forth herein. I. Introduction Mr. Barreca is the sole named inventor on three issued patents dealing with functional gums containing particular active ingredients. Mr. Barreca also has an educational background (University of Texas) in physiology, and decades of practical experience in the health and fitness field. Mr. Barreca is thus eminently qualified to testify as to his claimed inventions, what he meant by terms he utilized to describe his inventions, and what his experience and personal knowledge consists of as it relates to tests that he personally conducted (as he disclosed during his days of deposition) and

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various other reliable publications on relevant issues. Defendants want the Court to dismiss these facts and simply conclude that the inventor of the `839 patent is not an "expert witness" who can testify as to his own patented invention. Notably, Defendants fail to address the fact that Mr. Barreca is one of ordinary skill in the art. Testimony from one of ordinary skill in the art is what is called for here ­ not necessarily "expert" testimony. Admittedly, in many patent infringement cases testimony from an "expert" is solicited, with such person most often having to "dummy down" so that they can testify as one of ordinary (rather than one of exceptional) skill in the art. Here, Mr. Barreca is one of ordinary skill in the art. II. Plaintiff Has Been Diligent In This Litigation Defendants accuse Plaintiff of repeatedly flouting court deadlines, lack of diligence and gamesmanship. Nothing is further from the truth. It was Plaintiff, early on in this litigation, who moved for a Markman hearing to decide critical claim interpretation issues (filed 8/13/04), to address issues concerning summary judgment regarding infringement and validity (filed 4/27/05), and to exclude Defendants' technical expert (filed 9/23/04). It was Defendants who had previously failed to meet the Court's deadlines with respect to opinion of counsel defenses, and has sought numerous extensions of time in the past four years of litigation. Defendants next disingenuously contend that Plaintiff never indicated that he could testify as one of skill in the art prior to the close of discovery. The truth is that at Defendants request, Plaintiff permitted his deposition (2 days) to be taken after the close of discovery, (in addition to 2 days of deposition testimony in the `540 case). In these

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depositions, Plaintiff consistently revealed the substance of what he would testify to at trial. It is simply not true that Defendants where somehow caught off guard or can honestly contend they are surprised about Mr. Barreca's knowledge and opinions. The present case does not involve complex technology. Nothing here is beyond the purview of lay witnesses who are daily bombarded by diet plans, vitamins, and who count their caloric intake and work out three times a week. The testimony of the inventor of a unique gum product would certainly assist, not confuse, the trier of fact as to the nature of the invention and how the claim terms by which he chose to define his invention were meant to be interpreted and applied. Finally, Defendants can prepare an effective cross-examination of Mr. Barreca. Defendants took over four days of Mr. Barreca's deposition during the past four years. Mr. Barreca answered numerous questions as to his background and knowledge of the various active gum ingredients and provided his opinions on salient issues. Moreover, if some stone has been left unturned by Defendants, Plaintiff has no objection in providing Defendants with an additional deposition. III. The Jury Should Hear That Defendant 7-Eleven Admitted Taurine Is A "Metabolic Enhancer" Defendants go too far when they contend that the "Court rejected the theory that Plaintiff could rely on that alleged admission [that taurine is a metabolic enhancer] to establish the claim limitation at issue." The Court did no such thing. The Court simply concluded that the doctrine of judicial estoppel did not here apply. The jury, however, can and should evaluate the uncontested prior admission by Defendant 7-Eleven that taurine is a "metabolic enhancer." The issue of whether such metabolic enhancer is one

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that increases a user's metabolism is an issue that the jury can address ­ as this claim language is inherent in the term "metabolic enhancer" (i.e. enhance means to increase). To Plaintiff, whether the `839 patent is infringed distills down to whether taurine (or the vitamin C and ginseng admittedly present in the SoBe Energy gum) is a type of metabolic enhancer "that achieves a higher caloric burn rate." Mr. Barreca testified that he personally performed tests, using a heart monitor, to gauge individual's reactions when they chewed various gums. Despite the fact that the Court has previously held that Plaintiff need not actually demonstrate that the chewing of certain gums actually does increase a user's metabolism, Mr. Barreca did just that. IV. Expert Testimony Is Not "Required" Here Defendants falsely imply that the question of whether the SoBe Energy gum meets the `839 claim limitations "can only be answered through expert, scientific testimony." This Court merely stated in the `540 patent litigation that "[w]hether such ingredients are present and whether they have the expressed capability is a matter that scientists should be able to determine from an objective test[.]" Barreca v. South Beach Beverage Co., 322 F.Supp.2d 1186, 1196 (D. Colo. 2004)(emphasis added). Never did the Court state that Mr. Barreca, as the inventor of the gum in question, could not testify as one of ordinary skill in the art. Nor did the Court indicate that infringement here could only be established by expert testimony. All that is required here is the testimony of the inventor, who was one of skill in the art. The inventor's testimony in this regard will assuredly "assist the trier of fact." City of Hobbs v Hartford Fire Ins. Co., 162 F.3d 576, 586 (10th Cir. 1998).

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Next, once a dispute over claim construction arises, "experts" should also not be heard to inject a new meaning into terms that is inconsistent with what the inventor set forth in his patent and communicated, first to the patent examiner and ultimately to the public. Patents should be interpreted on the basis of their intrinsic record, not on the testimony of such after-the-fact "experts" that played no part in the creation and prosecution of the patent. See Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1578 (Fed. Cir. 1995) ("[E]vidence extrinsic to the patent and prosecution history, such as expert testimony, cannot be relied on to change the meaning of the claims when that meaning is made clear by those documents."). Plaintiff respectfully submits that this case turns on the proper construction of the claim terms, rather than on the submission of expert testimony. Mr. Barreca, as the inventor, can certainly provide testimony as to his invention, what is encompassed by his claim terms and the meaning thereof. Defendants contend that Mr. Barreca should not be able to testify about the SoBe Energy gum as it relates to his claimed invention because Mr. Barreca is not considered by Defendants to be an "expert." In Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684 (Fed. Cir. 2001) defendants objected to the testimony of eight witnesses because they had not been designated as experts as required by Fed. R. Civ. P. 26(a)(2) and were not properly admitted under Fed. R. Evid. 702. The defendants in that case sought exclusion of any expert testimony, absent "substantial justification." The Federal Circuit, however found that because the testimony was factual and based upon the witnesses' personal knowledge, the testimony was properly admitted under Fed. R. Evid. 701 and acknowledged that courts may allow lay witnesses to express opinions

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that require specialized knowledge. United States v. Riddle, 103 F.3d 423, 428 (5th Cir. 1997) (quoting Lubbock Feed Lots, Inc. v. Iowa Beef Processors, 630 F.2d 250, 263 (5th Cir. 1980)). Mr. Barreca testified in his deposition that, based on his personal knowledge and experience, he has a general understanding of taurine. Defendants make it appear that because such knowledge may have been based on "research, documented articles, science articles, [and] generally printed definitions" and on "some research" personally conducted by Plaintiff, that he could not possibly provide testimony in this regard. But, don't experts attain their knowledge through precisely these routes? If Plaintiff had completed all of his physiology studies at the University of Texas, would Defendants' opinion change? If he had read a bit more or performed a few more experiments, would Defendants ever acknowledge that Plaintiff should be awarded "expert" status they deem necessary to establish infringement? Never do Defendants indicate what level of education, training, tests or research would be deemed satisfactory. They simply contend that whatever Mr. Barreca possesses is not sufficient. Entirely disregarding his status as

an inventor of three issued U.S. patents in this area, Defendants boldly contend that "Plaintiff is no more qualified to testify on this issue than the average person with a home computer and an internet connection." Defendants' distain for Plaintiff should not color the Court's objective assessment of what evidence is necessary to take this case before a jury. Unlike the individual at issue in the case relied upon by Defendants, United States v. Kelly, 6 F.Supp.2d 1168 (D.Kan. 1998), Plaintiff does not lack "any academic

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background, formal education or training, and experience that would qualify him as an expert" on the subject of the `839 patented invention. Indeed, Mr. Barreca is uniquely qualified as the person in the world who has the most knowledge as to his patented invention. V. Mr. Barreca Is One of Skill In the Art Defendants imply that Mr. Barreca previously admitted that he was not one of ordinary skill in the art. This is simply untrue. Lacking any admission of the kind, Defendants instead point to an argument made by counsel in the '540 litigation (see Plaintiff's Motion to Reconsider Court's Order on Claims Construction at 26) where Plaintiff complained because Defendants were attempting to use Mr. Barreca's deposition testimony without first establishing that Mr. Barreca was one of skill in the art. Mr. Barreca own testimony in this case unequivocally sets forth that he considers himself to be one of ordinary skill in the art. Defendants cite to no legal authority that an inventor is not to be considered one of skill in the art. Defendants' reliance on Air Turbine Technology, Inc. v. Atlas Copco AB, 410 F.3d 701 (Fed. Cir. 2005) is misplaced. In that case, the Federal Circuit excluded testimony from a co-inventor of a patent, emphasizing that under the circumstances presented there, that particular co-inventor did not necessarily have "particularized knowledge and experience in the structure and workings of the accused device." The Court was silent as to whether perhaps one of the other co-inventors could so testify. Here, there is only one inventor, so this issue does not arise.

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In contrast to Air Turbine, the issue here does not concern the structure or the workings of the SoBe Energy gum. Such "structure and workings" is not in dispute -for example, Defendant 7-Eleven does not contest that both Vitamin C and the "metabolic enhancer" taurine is present in the gum base of the SoBe Energy gum. The sole issue concerns the inherent nature of those ingredients and if they are properly considered to be encompassed by what the inventor intended to claim as his invention, namely "a metabolic enhancer that increases a user's metabolism to achieve a higher caloric burn rate." The inventor, Mr. Barreca, provided lengthy deposition testimony, identified tests he personally conducted, and referred to and presented supporting documentation to address this issue (from independent sources having no stake in the outcome of this litigation, hence avoiding any concerns about reliability). Defendants simply want to avoid having a lay jury hear testimony about a non-complex gum that admittedly has a "metabolic enhancer" therein, and pleads with this Court to prevent a trial on the merits based on the words "to achieve a higher caloric burn rate." But a lay jury is fully capable of understanding this phrase and can weigh the evidence presented. Defendants' evidentiary challenges and the admitted lack of an outside expert witness (other than the inventor himself) should not prevent a full and fair trial on the merits. The Federal Circuit has "never required a party to proffer expert testimony on claim interpretation or on application of claim language to accused devices." Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1270 (Fed. Cir. 1986) (emphasis in original).

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Comparing Defendants' alleged "expert" testimony of Mr. Fritz with Mr. Barreca's deposition testimony is illustrative in this regard. Mr. Fritz' expert report never mentioned anything about whether taurine is a metabolic enhancer. (Not until well after discovery closed did Defendants submit a declaration from Mr. Fritz that attempted to address this point.) (See Exhibit A, Declaration of Fritz dated April 27, 2005.) Unlike Mr. Barreca, Mr. Fritz never indicated that he performed any independent tests on the metabolic enhancing effects of the SoBe energy gum. Nor did he indicate that he had reviewed the sources that Mr. Barreca had reviewed which explicitly set forth (to a lay person audience) that Vitamin C is a metabolic enhancer that increases a person's caloric burn rate. Indeed, Mr. Fritz' experience is limited to gum manufacturing ­ so even he would not meet the strict standards for an expert that Defendants apparently contend is necessary in order to testify in this case. Mr. Barreca's prior deposition testimony, far more than Mr. Fritz alleged expert report, sets forth a basis for an opinion that would be useful to a jury's understanding of the issues in this case. Mr. Barreca should be allowed to testify at trial.

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DATED: October 13, 2005

Respectfully submitted,

s/ Robert R. Brunelli_____ Robert R. Brunelli, Esq. ([email protected]) Joseph E. Kovarik, Esq. ([email protected]) Sheridan Ross P.C. 1560 Broadway, Suite 1200 Denver, Colorado 80202 (303) 863-9700

ATTORNEYS FOR PLAINTIFF JACK BARRECA

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CERTIFICATE OF SERVICE

I hereby certify that on October 13, 2005, I electronically filed the foregoing with the Clerk of Court using the CM/ECF system which will send notification of such filing to the following e-mail addresses: [email protected] [email protected] [email protected] [email protected] [email protected] [email protected]

s/ Brenda A. Carpenter Brenda A. Carpenter Assistant to Joseph E. Kovarik Attorney for Plaintiff SHERIDAN ROSS P.C. 1560 Broadway, Suite 1200 Denver, CO 80202-5141 Telephone: 303-863-9700 Facsimile: 303-863-0223 Email: [email protected] [email protected]

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