United States District Court, D. Nevada
GEORGE FOLEY, Jr., Magistrate Judge.
This matter is before the Court on Defendants' Motion to Compel Production of Measurements Taken by JS Products, Inc.'s Expert Gene Olson (#301), filed on May 19, 2014. Plaintiff filed its Opposition to the Motion to Compel (#324) on June 5, 2014. Defendants filed their Reply (#351) on June 16, 2014. The Court conducted a hearing in this matter on June 25, 2014.
Plaintiff JS Products, Inc. seeks a declaratory judgment that U.S. Patent No. 7, 066, 057 (the "057 patent") owned by Defendant Kabo Tool Company ("Kabo") is invalid. JS Products also seeks a declaratory judgment that certain wrench products sold by it in the United States do not infringe the 057 patent, assuming it is valid. Defendant Kabo has, in turn, asserted a counterclaim for patent infringement against JS Products, Inc. based on its sale of allegedly infringing wrenches.
The 057 patent relates to the design of a wrench that has jaws that have different tilt angles. Pursuant to Claim One of the patent, the jaws are angled so that they are on a different plane from the wrench handle. The jaws are also on different planes from each other and the jaws have different thicknesses. This design allegedly provides for better contact between the jaws and the nut or bolt head to which the wrench is applied. JS Products purchased allegedly infringing wrenches from its Taiwanese supplier Porauto. The wrenches were manufactured by another Taiwanese tool manufacturer, Jin Wan. JS Products sold the allegedly infringing wrenches in the United States to Lowes Hardware which marketed the wrenches under the brand name "Kobalt Cross Form Wrenches" (hereinafter the "accused wrenches"). It is undisputed that the jaws of the accused wrenches are on a different plane from the wrench handle. There is a dispute, however, whether the jaws are designed to be on different planes from each other or to have different thicknesses from each other.
In January 2014, Defendant Kabo disclosed the initial report of its expert witness, S. Philip Buckley, P.E. Mr. Buckley opined that the accused wrenches infringe the 057 patent. Mr. Buckley's opinion was based, in part, on his evaluation of drawings of the accused wrenches that were produced by JS Products and, in part, on Mr. Buckley's measurement of 74 accused wrenches that he purchased from a Lowes Hardware Store. In January 2014, Plaintiff JS Products also disclosed the initial report of its expert witness Gene Olson, P.E. Appendix 2 to Motion to Compel (#304), Exhibit C. Mr. Olson's initial report dealt only with his opinion that the 057 patent is invalid. Mr. Olson did not address whether the accused wrenches infringe the 057 patent.
JS Products subsequently disclosed a rebuttal expert report by Mr. Olson dated February 11, 2014. Appendix 3 to Motion to Compel (#304), Exhibit D ("Olson Rebuttal Report"). In the first part of his rebuttal report, Mr. Olson again addressed issues relating to the alleged invalidity of the 057 patent. Olson Rebuttal Report, ¶¶ 6-32. In the second part of his rebuttal report, which begins with the heading "VIII. THE JS PRODUCTS WRENCHES DO NOT INFRINGE THE PATENTS-IN-SUIT, " Mr. Olson provided a rebuttal to Mr. Buckley's infringement opinion. Id., pg. 9. Mr. Olson criticized two aspects of Mr. Buckley's infringement opinion. First, he criticized Mr. Buckley's reliance on drawings of the accused wrenches produced by JS Products to support his infringement opinion. Mr. Olson argued that the drawings do not provide enough detail regarding the specific dimensions of the wrenches to support a conclusion that any variances in the angles or thicknesses of the jaws are due to design, rather than acceptable tolerances in the manufacturing process. Olson Rebuttal Report, ¶¶ 33-36. Secondly, Mr. Olson criticized Mr. Buckley's reliance on the results of his measurements of the 74 accused wrenches. Mr. Olson stated:
I examined the measurement results reported by Mr. Buckley and reported in the Buckley Report, ¶¶ 84, 89. These results show that as measured by Mr. Buckley, the average difference in height between the jaws is about 0.1mm or 100µm. This is about the thickness of an average human hair. I would not expect a user to either see such a small difference in thickness between the two jaws, or feel the difference in thickness between the two jaws. Without relatively sophisticated measuring equipment, users would not be able to detect any difference in the thickness between the two jaws.
Olson Rebuttal Report, ¶ 37.
Mr. Olson further stated that "[t]he results reported in the Buckley Report, ¶¶ 84, 89, show that about half of the time the first jaw is thicker than the second, and about half of the time the second jaw is thicker than the first." Id., ¶ 38. Mr. Olson stated that because the 057 patent appears to call for the first jaw to be thicker than the second jaw, the measurements undermine Mr. Buckley's opinion that the accused wrenches infringe the patent. Id.
Kabo's counsel deposed Mr. Olson on April 10, 2014 regarding the opinions in his two reports. Mr. Olson testified that shortly after he was retained by JS Products, he purchased inch and metric sets of accused wrenches from a Lowes Hardware Store in Kenosha, Wisconsin. He testified that he made measurements of these wrenches, using the same methodology he used to measure the "prior art" wrenches discussed in his initial report. Appendix 3 to Motion to Compel (#304), Exhibit H ("Olson Deposition"), pp. 54-57. Kabo's counsel asked Mr. Olson if he compared his measurements with those made by Mr. Buckley. Mr. Olson responded: "In general. Not in specific because they were different wrenches." Id., p. 55:10-15. Mr. Olson was also asked whether his measurements revealed differences in tilt angles. He responded affirmatively. Id, p. 57:11-22. Plaintiff moves for production of the measurements that Mr. Olson made of the accused wrenches he purchased. Defendant opposes the motion on the grounds that Mr. Olson's measurements are irrelevant to the opinions in his initial and rebuttal reports.
In determining whether Mr. Olson's measurements of the accused wrenches are discoverable, the court must decide whether the measurements are relevant to the expert opinions that Mr. Olson is expected to render at trial and whether Mr. Olson considered the measurements in forming his opinions.
Rule 26(a)(2)(B) of the Federal Rules of Civil Procedure provides that an expert who has been retained or specially employed to provide expert testimony in the case, must prepare a written report that contains "(I) a complete statement of all opinions the witness will express and the basis and reasons for them; [and] (ii) the facts or data considered by the witness in forming them." These requirements apply to both initial and rebuttal expert reports. Rule 26(a)(2)(D). Rule 26(b)(4)(A) provides that a party may depose any person who has been identified as an expert whose opinions may be presented at trial. Rule 26(b)(4)(B) states, however, that Rule 26(b)(3)(A) and (B) (the "work product" rule) protect from discovery drafts of any expert report or disclosure. Rule 26(b)(4)(C) states that the work product rule also protects from discovery communications between a party's attorney and any witness ...