Free Motion in Limine - District Court of Colorado - Colorado

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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 MOTION IN LIMINE TO ALLOW MR. BARRECA TO TESTIFY AS ONE OF ORDINARY SKILL IN THE ART, OR IN THE ALTERNATIVE, TO AMEND THE PRETRIAL ORDER TO ADD MR. BARRECA AS AN EXPERT WITNESS WHO WILL TESTIFY AT TRIAL ____________________________________________________________________________ Plaintiff moves to have Mr. Barreca testify at trial as one of ordinary skill in the art, or in the alternative, to amend the Pretrial Order to add Mr. Barreca as an expert witness who will testify at trial. Introduction In its Order of 8/8/05, the Court expressed concerns with respect to whether Mr. Barreca had been properly disclosed as an expert in this case. Plaintiff admits that he was not listed as an expert in the Pretrial Order dated June 30, 2005. The reason for not listing him as an expert at such time was that Plaintiff had a good faith belief that his testimony, as one of ordinary skill in the art, as the inventor of the claimed invention, and as a fact witness as to the

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characteristics of the Sobe Energy gum, did not require him to be so designated. Pursuant to the Court's recent Order, however, it appears that there may be some question as to whether, in the absence of Mr. Barreca being designated as an expert witness, the Court will permit Mr. Barreca to testify that taurine and/or Vitamin C are considered metabolic enhancers that increase a user's metabolism in order to achieve a higher caloric burn rate. To address this issue, Plaintiff respectfully moves the Court to allow Mr. Barreca to testify as one of ordinary skill in the art, or in the alternative, to amend the Pretrial Order, if necessary, to list Mr. Barreca as an expert so that he can provide such testimony. The Court already determined that Plaintiff has come forward with evidence sufficient to create a genuine issue of material fact to defeat Defendants' motion for summary judgment of noninfringement (i.e." The Court finds that plaintiff has come forward with some evidence that creates a genuine issue of material fact as to whether or not taurine and Vitamin C, admittedly ingredients contained in defendants' SoBe Energy gum, are metabolic enhancers that increase a user's metabolism in order to achieve a higher caloric burn rate, so as to bring the accused product within the claims of plaintiff's `890 patent.") The Court further acknowledged that Plaintiff has presented credentials that suggest he has qualifications to give an expert opinion before a jury (e.g. his status as an inventor of several gum patents, that he studied physiology at the University of Texas, that he has worked in the health and fitness field for over twenty years, that he has studied various aspects of the health and fitness industry, that he has done considerable research on various active ingredients that may be suitable for inclusion in gum, and that he considers himself to be a person of ordinary skill in the art of centerfilled chewing gums that include particular active ingredients.) (Court's 8-9-05 Order)

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Plaintiff's initial Motion for Summary Judgment of infringement of the `839 patent (filed April, 2005, two months prior to the Court's Markman Order on the `540 case) was predicated on the reasonable belief that at least Defendant 7-Eleven's clear admission that taurine is a "metabolic enhancer" would obviate any need to present any other proof on this point. Now that the Court has decided that such admission is not binding upon any Defendant, Plaintiff for the first time appreciates that the Court may require expert (or one of ordinary skill in the art) testimony as to whether taurine and/or vitamin C (admittedly in the Sobe Energy gum base) are metabolic enhancers as set forth in the `839 claims. Finally, Plaintiff respectfully points out that the Court (in the related `540 patent litigation) allowed Defendants to amend of the Pretrial Order to present an "opinion of counsel" defense to Plaintiff's charge of willful infringement. (See Order date June 16, 2004). At that time, three (3) months from trial, the Court found that there was no prejudice in permitting Defendants to amend the Pretrial Order so that Defendants could present an opinion (that they were in possession of for over a year), provided Plaintiff was permitted to take some limited discovery if deemed necessary. Here, trial is scheduled for January 30, 2006 - 5 months away ­ and Defendants have already taken a total of four (4) days of deposition testimony from Mr. Barreca covering all areas relating to Mr. Barreca's background. If it is determined that Mr. Barreca must be designated as an expert, there would be no prejudice is amending the Pretrial Order to list Mr. Barreca as an expert witness so that he can testify as to technical issues as one of ordinary skill in the art. Further, should the court deem it necessary, Mr. Barreca will also agree to be deposited once again by Defendants.

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Pretrial Order The Pretrial Order provides the detail as to what Mr. Barecca intends to testify about at trial. In this regard, the Pretrial Order states as follows: "Jack Barreca. Mr. Barreca will testify live concerning his contacts and conversations with representatives of each of the Defendants with respect to their interest in producing and/or marketing his gum product, his commercialization and production capabilities and contacts, events surrounding and his understanding of the October/November 2001 letter agreement with Lotte and his intentions when executing such agreement. Mr. Barreca will also testify about the development of his gum product, including his patent applications and issued patents, the validity of the `839 patent, the infringement of the `839 patent and the damages he has incurred, including a basis for what deal a reasonable party in his position would have negotiated with the Defendants as of November 25, 2003. Mr. Barreca will also testify about the willfulness of Defendants' infringement and the exceptional nature of this case. Mr. Barreca may also testify about the meaning of terms used in his patent claims, the value of his patented technology, the state of the art at the time of his invention and the commercial opportunities and potential his inventions presented. (emphasis added)." The Defendants also listed Mr. Barreca as a witness and provided their understanding of what he would testify about as follows: "Jack Barreca. Mr. Barreca is expected to testify regarding his claimed invention, as well as issues relating to the release agreement he executed and issues relating to Robert Matuszewski. Mr. Barreca is expected to testify in person. (emphasis added)." Legal Authority A. Rule 701 Testimony of an Inventor In De Graffenried v. United States, 2 Cl. Ct. 640, 643 (Ct. Cl. 1983), the court held that under rule 701, an inventor is permitted to testify as to the infringement of his patent because his testimony would assist the Court in developing a clear understanding of the facts at issue. ("Mr. de Graffenried identified himself as knowledgeable of the contents of his patent and its

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infringement. Because he is technically conversant with the factual subject matter of this suit, Mr. de Graffenried's opinions and inferences regarding his patent, the prior art, and the alleged infringement would assist this court in developing a clear understanding of the facts in issue.") "[It] is obvious that the interpretation of the meaning of the document in respect to the ordinary words, being a part of the function of the court . . . is not for a witness to speak to. But so far as those words are technical, and the witness speaks to technical usage or meaning there is no prohibition." 7 Wigmore on Evidence, p. 108, § 1955 (1981). A patent is a technical document that the patentee is able to interpret. Consequently, the patentee can be required to answer questions about the technical substance of his patent. See Messe v. Eaton Mfg. Co., 35 F.R.D. 162 (N.D. Oh. 1964). A patentee's interpretation of his patent and what would infringe upon that patent is not precluded by the rule of evidence that generally excludes testimonial opinion on the interpretation of a document. 7 Wigmore on Evidence § 1953 (Chadbourn rev. 1978). This is true, because "Inventors, as a class, ... possess something -- call it what you will -- which sets them apart from the workers of ordinary skill,.... A person of ordinary skill in the art is also presumed to be one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, ...." Std. Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). Rule 701 does not prohibit Mr. Barreca from testifying to matters "rationally based on [his] own perceptions and experience." Tampa Bay Shipbuilding & Repair v. Cedar Shipping Co., 320 F.3d 1213, 1221 (11th Cir. 2003).

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B. Amendment of the Pretrial Order The purpose of the pretrial order is to "insure the economical and efficient trial of every case on its merits without chance or surprise." See Hull v. Chevron U.S.A., Inc., 812 F.2d 584, 588 (10th Cir. 1987). The Tenth Circuit applies a four factor analysis in determining whether to allow the amendment of a pretrial order: (1) the prejudice or surprise in fact to the party against whom the proposed witness would testify; (2) the ability of that party to cure such prejudice; (3) the extent to which allowing the addition of a witness would disrupt the orderly and efficient trial of the case or of other cases in court; and (4) bad faith or willfulness by the moving party to comply with the court's pretrial order. Koch v. Koch Industries, Inc., 203 F.3d 1202, 1222 (10th Cir. 2000); Smith v. Ford Motor Co., 626 F.2d 784, 797 (10th Cir. 1980). In applying these factors, the paramount concern must be to assure "the full and fair litigation of claims." Joseph Manf'g Co., Inc. v. Olympic Fire Corp., 986 F.2d 416, 420 (10th Cir.1993). Modification should be allowed "when the danger of surprise is small and a failure to amend might result in an injustice to the moving party." Bridge Publications, Inc. v. F.A.C.T.NET, Inc., 183 F.R.D. 254, 258-59 (D. Colo. 1998)(quoting 6A Wright, Miller & Kane, Federal Practice and Procedure: Civil 2d § 1527 at 287 (1990)). The Hull court also cautioned that "total inflexibility" with regard to amending a pretrial order is "undesirable." Hull v. Chevron USA, Inc., 812 F.2d 584, 588 (10th Cir, 1987). A pretrial order "should [also] be 'liberally construed to cover any of the legal or factual theories that might be embraced by [its] language.'" Trujillo v. Uniroyal Corp., 608 F.2d 815, 818 (10th Cir. 1979) (quoting Rodriguez v. Ripley Indus., Inc., 507 F.2d 782, 787 (1st Cir. 1974)). "[T]he pretrial order is a procedural tool to facilitate the trial of a lawsuit on its merits

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and not to defeat it on a technicality." Id. The Tenth Circuit also considers whether the party favoring amendment of the pretrial order formally and timely moved for such modification in the trial court. Hullman v. Board of Trustees of Pratt Community College, 950 F.2d 665, 66768 (10th Cir. 1991). Even if the proffered testimony of Mr. Barreca had not been perfectly described in the present pretrial disclosures, that would provide no ground for excluding it. See Moss v. Feldmeyer, 979 F.2d 1454, 1459-60 (10th Cir. 1992) (affirming order permitting an expert medical witness to expand his testimony the morning of trial over objection of unfair surprise).

Argument A. Barreca Should be Permitted to Testify at Trial as One of Ordinary Skill in the Art

Plaintiff respectfully contends that in view of the nature of the accused product (a chewing gum) and the admittedly non-complex nature of the claimed invention (a center-filled chewing gum having certain specified active ingredients) no expert testimony is required to prove infringement (e.g. because even a lay jury can understand the claim terms at issue and can assess infringement). The only testimony that may be required is from one of ordinary

skill in the art and Mr. Barreca, the inventor, is such a person. Mr. Barreca testified at his deposition, and should be able to testify at trial, as to his understanding of his own invention, including what qualifies as a "metabolic enhancer that increases a user's metabolism in order to achieve a higher caloric burn rate." Mr. Barreca's prior declarations and deposition testimony established that Vitamin C, taurine, guarana and/or ginseng are encompassed by such claim term. Such opinion is supported by independent third party sources, as noted by this Court.

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Since this is the only material issue outstanding here, his testimony alone should be able to establish infringement of the `839 patent. If expert testimony is deemed to be required, then Mr. Barreca should be able to testify as an "expert" (since experts in patent cases are employed to assume the role of one of ordinary skill in the art ­ and Mr. Barreca is such a person). While Mr. Barreca was not earlier designated as an "expert", he should be permitted to be so designated now because: (a) trial is 5 months away and the Court should permit amendment of the Pre-trial Order because the Court previously allowed Defendants to similarly amend the Pretrial Order in the `540 litigation to add an "opinion of counsel" defense with less than 3 months from trial; (b) there would be no prejudice or surprise to the Defendants since Mr. Barreca has endured over 4 days of deposition testimony that canvassed his background and opinions; and (c) Plaintiff did not act in bad faith in failing to list himself as an expert because until the Court recently held that Defendant 7-Eleven's prior admission that taurine is a "metabolic enhancer" was not going to be sufficient to establish infringement, there was no reason to believe that any expert testimony would be required. It would be manifestly unjust to now preclude Plaintiff from raising at trial issues that were specifically raised during motions for summary judgment as well as during extended deposition testimony. Such issues have been extensively briefed by the parties in conjunction with motions for summary judgment and Defendants have been aware throughout this litigation, as well as the prior related `540 patent litigation, of the issues at hand. Prior to the

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court's construction of the `839 claims, however, Plaintiff could not have divined how the Court might rule on the need for expert testimony with respect to claim terms as they relate to infringement. Moreover, this is not a case where Defendants were deprived of Mr. Barreca's opinions. Mr. Barreca has undergone a total of over four days of deposition testimony in the prior related `540 litigation and in this case. Defendants were able to and did ask questions of Plaintiff with respect to his status of one of ordinary skill in the art, the research and tests he had conducted, the meaning and interpretation of the claim terms as they related to the Sobe Energy gum, published documents from third parties that supported Mr. Barreca's opinions, etc. There is no surprise as to Mr. Barreca's opinions. Defendants should not be permitted to deny Plaintiff his day in Court on the slim reed that Barreca was not previously designated as an expert. Defendants have always known about what Barreca would testify. Indeed, the areas of Barreca's testimony was clearly set forth in the Pretrial Order (see above). Defendants previously acknowledged that "[t]he invention disclosed in the '839 is not a microchip, a pharmaceutical, or a complex machine." (Defendants' Response to Plaintiff's Motion to Exclude Expert Testimony of Douglas Fritz.). The Federal Circuit has held that in

many patent cases expert testimony is not necessary when the technology is "easily understandable without the need for expert explanatory testimony." Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567, 1573 (Fed. Cir. 1984) (emphasis added); see also Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.2d 1371, 1384 (Fed. Cir. 2004). The Federal Circuit has stated that "[w]e have never required a party to proffer expert testimony on claim interpretation or on application of claim language to accused devices." Moleculon Research

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Corp. v. CBS, Inc., 793 F.2d 1261, 1270 (Fed. Cir. 1986) (emphasis in original). Barreca submits that he need not be designated as an expert to explain to a jury the meaning of terms in his patent or how those terms are met by substances admittedly present within Defendant's accused gum. If the court disagrees, however, Barreca requests that he be added as an expert witness to the Final Pretrial Order (as explained below). B. Barreca's Testimony is Encompassed Under Rule 701.

Rule 701 provides that a witnesses' testimony in the form of opinions or inferences are admissible if they are rationally based on the perception of the witness and are helpful to a clear understanding of the witnesses testimony or the determination of a fact in issue. As the advisory committee notes to the 2000 amendments of Rule 701 explain, "certainly it is possible for the same witness to provide both lay and expert testimony in a single case." See 2000 Amendments 701. Rule 701 provides that opinion testimony is admissible where there is "particularized knowledge that the witness has by virtue of his or her position in the business." See Rule 701 2000 Amendments. Mr. Barreca holds three patents to and is the sole inventor of liquid-filled chewing gums and he has particularized knowledge of such inventions. See, e.g., United States v. Westbrook, 896 F.2d 330 (8th Cir., 1990). As the Court previously acknowledged, Mr. Barreca is at least one of ordinary skill in the art and his testimony can and does establish solid grounds to support a finding of infringement. Mr. Barreca will be called upon to testify as to the various aspect of his own invention, the prior art to his invention, and what he observed when he examined the accused product and conducted tests thereon. His testimony will be based on his status as one of ordinary skill in the art. As the sole inventor of

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the `839 patented invention, Mr. Barreca has experience in describing the various embodiments of his invention, as well as to his perception as to what products infringe his claims and why. C. In The Alternative, Barreca's Should Be Permitted To Testify As An Expert

The advisory committee notes to the 2000 Amendments to Rule 702, explain that "the rejection of expert testimony is the exception, rather than the rule" in that the "trial court's role as gatekeeper is not intended to serve as a replacement for the adversary system." United States v. 1438 Acres of Land Situated in LeFlore County, Mississippi, 80 F.3d 1074, 1078 (5th Cir. 1996). Barreca's testimony as the inventor and as one who understands his invention is consistent with the norm in patent cases. Admittedly, Mr. Barreca was not previously listed as an expert and he therefore did not generate an expert report. To the extent the Court deems it necessary under the circumstances, Plaintiff requests leave to Amend the Pretrial Order to reflect that Mr. Barreca will testify as one of skill in the art (thus offering alleged "expert" testimony) and that he be permitted to do so just as an expert would be permitted to testify on such issues. Such testimony would include the ability of Mr. Barreca to rely upon extrinsic evidence to support his opinions. The only aspects of an expert report that may arguably be missing from the extensive deposition testimony, declarations and motions filed by Plaintiff, relate to whether Mr. Barreca is being compensated for his testimony (he is not) and whether he has had any publications within the last ten years (he has none). These factors are set forth in the accompanying declaration of Mr. Barreca. There would be no prejudice to Defendants in permitting Mr. Barreca to testify as an expert. None of Barreca's opinions would be a surprise to Defendants because they were all

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expressed in either his four days of deposition testimony and/or in his declarations that accompanied the numerous summary judgment motions and responses in this case. In view of the fact that trial in this case will not proceed until January 30, 2006, permitting Mr. Barreca to be designated as an expert now would not disrupt the orderly and efficient trial of this case. Defendants could also, if deemed necessary, be provided with additional discovery (as this Court provided for when permitting the Pretrial Order in the `540 patent case to be amended). Moreover, Plaintiff's failure to designate Mr. Barreca as an expert was not motivated by any bad faith on behalf of Plaintiff to willfully fail to comply with the Court's pretrial order. Permitting such testimony will assure a full and fair trial of the claims. Conversely, a failure to permit Mr. Barreca's testimony in this regard would result in manifest injustice to the Plaintiff.

Compliance with Duty to Confer Pursuant to D.C. Colo. L. Civ. R. 7.1, Plaintiff's counsel has conferred with Defendants' counsel, who has indicated that they object to the relief requested herein.

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Conclusion For all the foregoing reasons, and in view of the fact that there will be no prejudice or surprise to Defendants if Mr. Barreca testifies as one of skill in the art or as an "expert," such testimony would not disrupt the orderly and efficient trial of the case, and there is an absence of any bad faith or willfulness on Plaintiff's part in seeking to present such testimony, Plaintiff respectfully requests that the Court grant this motion.

DATED: September 7, 2005 Respectfully submitted,

s/ Joseph E. Kovarik_______ Joseph E. Kovarik, Esq. ([email protected]) Robert R. Brunelli, 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 September 7, 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 email 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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