Free Brief in Opposition to Motion - District Court of Colorado - Colorado

Case 1:03-cv-02579-RPM

Document 130

Filed 11/16/2006

Page 1 of 7

I N T HE U NITED S TATES D ISTRICT C OURT F OR T HE D ISTRICT O F C OLORADO Civil Action No. 03-CV-02579-RPM-BNB VARCO, L.P., Plaintiff, vs. PASON SYSTEMS USA CORP., Defendant. PLAINTIFF'S BRIEF IN OPPOSITION TO DEFENDANT PASON'S MOTION TO STRIKE EXPERT REPORT OF ALTON W. PAYNE

Plaintiff Varco L.P. ("Varco"), by its counsel, respectfully submits this Brief in Opposition to Defendant Pason's Motion to Strike the Expert Report of Alton W. Payne ("Pason's Motion"), filed today, November 16, 2006. A hearing on all pending motions is scheduled with the Court tomorrow, November 17, 2006. In the event the Court wishes to hear argument on Pason's Motion at the November 17, 2006 hearing, Varco respectfully submits this short memorandum in opposition to Pason's Motion, with the accompanying Declaration of Alton Payne ("Payne Decl."). If the Court elects not to hear argument on Pason's Motion, Varco respectfully requests permission to submit a more complete, amended brief within the time limits specified by D.C.COLO.LCivR 7.1.

1

Case 1:03-cv-02579-RPM

Document 130

Filed 11/16/2006

Page 2 of 7

INTRODUCTION The crux of Pason's Motion concerns an issue that is not in dispute. Varco acknowledges ­ and the law is clear ­ that an expert witness may not testify to legal opinions. Specht v. Jensen, 853 F.2d 805, 807 (10th Cir. 1988). However, Varco is not proffering Mr. Payne as an expert to give an opinion on a question of law. Nor is Varco seeking to enter Mr. Payne's report into evidence. Rather, Mr. Payne will offer his opinions on the practices and procedures of the Patent and Trademark Office ("PTO") regarding the prosecution of patent applications, the re-examination of issued patents, and the disclosure of prior art. Courts consistently hold such opinions to be admissible. Therefore, Pason's Motion should be summarily denied. ARGUMENT I. MR. PAYNE'S TESTIMONY AS AN EXPERT WITNESS WILL REBUT THE OPINIONS OF PASON'S EXPERT. Pason seeks to preclude Mr. Payne from offering an opinion on the same subject matter that Pason's own expert has addressed in his report. Mr. Brett's report includes an entire section titled "Duty to Disclose." (Pason's Motion, Ex. A, Pt. 1, at 16-17). In this section of his report, Mr. Brett bases his analysis on his experience in filing Information Disclosure Statements ("IDS") during the course of prosecuting 25 patents on his own inventions. (Id.) Mr. Brett chronicles at length why he "ha[s] always considered it prudent and sound practice to do everything [he] could to have the [patent] examiner consider all possible relevant prior art during the examination process." (Id. at 16) (emphasis added); see also (id.) ("I have always believed that

2

Case 1:03-cv-02579-RPM

Document 130

Filed 11/16/2006

Page 3 of 7

ensuring the examiner considered all potential prior art was important." (emphasis added)). Mr. Payne bases the analysis in his report on his own experience prosecuting hundreds of patents during more than 25 years as a patent attorney. (Payne Decl., ¶ 2) (attached as Ex. 1). Mr. Payne will offer his opinions on the practices and procedures that the PTO has for the disclosure of prior art, including the submission of IDS. (Id., ¶ 4). Thus, Mr. Payne will rebut Mr. Brett's views and testify to the applicable PTO practices and procedures regarding disclosure of prior art. (Report of Alton W. Payne, at 1) (attached as Ex. 2). II. COURTS ROUTINELY ALLOW EXPERT TESTIMONY ON PTO PRACTICE AND PROCEDURE. There is no dispute that neither Mr. Brett nor Mr. Payne may testify to legal conclusions. However, an expert is allowed to testify to relevant PTO practices and procedures, including those involving the identification of prior art. In fact, courts routinely admit such testimony. See, e.g., The Proctor & Gamble Co. v. Teva Pharmaceuticals USA, Inc., No. 04-940-JJF, 2006 WL 2241018, at *1 (D. Del. Aug. 4, 2006) (expert patent lawyer's testimony may address "PTO practice and procedures" but "may not include legal conclusions or substantive issues of patent law") (attached as Ex. 3); EZ Dock, Inc. v. Schafer Systems, Inc., No. 98-2364-RHK-AJB, 2003 WL 1610781, at *9 (D. Minn. Mar. 8, 2003) (same) (attached as Ex. 4); Bausch & Lomb, Inc. v. Alcon Laboratories, Inc., 79 F. Supp. 2d 252, 255-56 (W.D.N.Y. 2000) (allowing same, including the "`nature and purpose' of interference and reexamination practice and procedure, including the terminology commonly used in those procedures").

3

Case 1:03-cv-02579-RPM

Document 130

Filed 11/16/2006

Page 4 of 7

Here, Mr. Payne has clarified that his expert opinion will address Mr. Brett's incorrect statement of PTO practice and procedure concerning, for example, identification of prior art. (Payne Decl., ¶¶ 3-4). Of course, to the extent that the Court finds that Mr. Payne's report includes statements of legal standards or conclusions, these statements can be amended or stricken. See Proctor & Gamble, 2006 WL 2241018, at *1-2 (allowing amended report, finding testimony concerning PTO practice and procedures admissible, but striking portions of report containing inadmissible legal conclusions). III. VARCO PROPERLY DISCLOSED MR. PAYNE. Pason argues that Varco failed to properly disclose Mr. Payne under Fed. R. Civ. P. 26(a)(2) because Mr. Payne's written report did not include "a complete statement of all opinions to be expressed and the basis and reasons therefore . . . [and] the data or other information considered by the witness in forming the opinions." (Pason's Motion, at 4-5) (alteration in original; quotations omitted). Varco's argument is without merit. In his report, Mr. Payne states his opinion: My opinion is that J. Ford Brett has incorrectly concluded that patent applicants have a duty to seek, find and then disclose prior art that may be considered relevant. He is simply wrong ­ the applicant for the `142 patent had no such duty. (Report of Alton W. Payne, at 1). The report also provides the "data or other information considered by the witness in forming the opinions." Fed. R. Civ. P. 26(a)(2). The report makes clear that Mr. Payne read Mr. Brett's reports. (Report of Alton W. Payne, at 1.) The report also

4

Case 1:03-cv-02579-RPM

Document 130

Filed 11/16/2006

Page 5 of 7

contains Mr. Payne's resume, which details his extensive experience as a patent attorney and patent agent. (Id. at Attached Resume 1-3). In forming his opinions, Mr. Payne relied on his familiarity with the customary procedures in practicing before the PTO. Pason implies that Mr. Payne should be stricken as an expert because the resume attached to his report "fails to disclose his employment with [Plaintiff's counsel Matthews, Lawson, Bowick & Al-Azem, P.L.L.C.]." (Pason's Motion, at 4 n.1). Mr. Payne is not now, nor has he ever been, employed by the Matthews firm, with whom he shares an office suite. (Payne Decl., ¶ 4). Fed. R. Civ. P. 26(a)(2) does not require Varco to disclose Mr. Payne's association with the Matthews firm. Pason had an opportunity to depose Mr. Payne, but elected not to do so. Pason is free to explore any concerns it may have about Mr. Payne's objectivity during cross-examination, but such concerns do not provide grounds for striking Mr. Payne as a witness. CONCLUSION For the foregoing reasons, Pason's Motion to Strike should be denied.

Dated this 16th day of November, 2006.

5

Case 1:03-cv-02579-RPM

Document 130

Filed 11/16/2006

Page 6 of 7

Respectfully submitted,

s/ Jane Michaels Jane Michaels Joseph T. Jaros Ryan T. Bergsieker H OLLAND & H ART LLP 555 Seventeenth Street, Suite 3200 Post Office Box 8749 Denver, Colorado 80201-8749 Tel. (303) 295-8000 Fax (303) 295-8261 [email protected] [email protected] [email protected] Guy E. Matthews Robert M. Bowick M ATTHEWS , L AWSON , B OWICK & A L -A ZEM , PLLC 2000 Bering Drive, Suite 700 Houston, Texas 77057 Tel. (713) 355-4200 Fax (713) 355-9689 [email protected] [email protected] ATTORNEYS FOR PLAINTIFF VARCO, L.P.

6

Case 1:03-cv-02579-RPM

Document 130

Filed 11/16/2006

Page 7 of 7

C ERTIFICATE O F S ERVICE I hereby certify that on November 16, 2006, 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 protected] [email protected]

s/ Jane Michaels

3633753_2.DOC

7