Case 1:17-cv-00770-JDW Document 279 Filed 01/05/24 Page 1 of 5 PageID #: 29534
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.,
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`Plaintiff,
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`v.
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`CATERPILLAR, INC.,
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`Defendant.
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`Case No. 1:17-cv-00770-JDW
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`ORDER
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`AND NOW, this 5th day of January, 2024, upon consideration of Defendant
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`Caterpillar, Inc.’s Motion To Strike Untimely New Opinions of Drs. John Meyer, Durham
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`Giles, and Pallavi Seth (D.I. 232), I note as follows:
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`1.
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`The Federal Circuit applies regional circuit law to procedural questions that are
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`not themselves substantive patent law issues so long as they do not (A) pertain to patent law,
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`(B) bear an essential relationship to matters committed to the Federal Circuit’s exclusive
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`control by statute, or (C) clearly implicate the jurisprudential responsibilities of the Federal
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`Circuit in a field within its exclusive jurisdiction. See GFI, Inc. v. Franklin Corp., 265 F.3d 1268,
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`1272 (Fed. Cir. 2001). Therefore, I apply Third Circuit law with respect to motions to exclude
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`evidence in patent cases.
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`2.
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`Although Caterpillar captions its Motion as a “Motion To Strike,” what
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`Caterpillar really wants me to do is exclude expert testimony under Federal Rule of Civil
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`Plaintiff,
`
`
`
`v.
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`
`CATERPILLAR, INC.,
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`
`
`
`
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`Defendant.
`
`
`
`
`
`
`
`
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`Case No. 1:17-cv-00770-JDW
`
`
`
`
`
`
`
`
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`ORDER
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`AND NOW, this 5th day of January, 2024, upon consideration of Defendant
`
`Caterpillar, Inc.’s Motion To Strike Untimely New Opinions of Drs. John Meyer, Durham
`
`Giles, and Pallavi Seth (D.I. 232), I note as follows:
`
`1.
`
`The Federal Circuit applies regional circuit law to procedural questions that are
`
`not themselves substantive patent law issues so long as they do not (A) pertain to patent law,
`
`(B) bear an essential relationship to matters committed to the Federal Circuit’s exclusive
`
`control by statute, or (C) clearly implicate the jurisprudential responsibilities of the Federal
`
`Circuit in a field within its exclusive jurisdiction. See GFI, Inc. v. Franklin Corp., 265 F.3d 1268,
`
`1272 (Fed. Cir. 2001). Therefore, I apply Third Circuit law with respect to motions to exclude
`
`evidence in patent cases.
`
`2.
`
`Although Caterpillar captions its Motion as a “Motion To Strike,” what
`
`Caterpillar really wants me to do is exclude expert testimony under Federal Rule of Civil
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`
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`Case 1:17-cv-00770-JDW Document 279 Filed 01/05/24 Page 2 of 5 PageID #: 29535
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`Procedure 37(c)(1). The expert disclosure provisions of Federal Rules of Civil Procedure 26
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`and 37 are designed “to prevent trial by ambush.” Ne. Sav., F.A. v. United States, No. 92-
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`550C, 2007 WL 5177410, at *3 (Fed. Cl. Feb. 8, 2007). Rule 26(a) requires that an expert
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`report contain “a complete statement of all opinions the witness will express and the basis
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`and reasons for them.” FED. R. CIV. P. 26(a)(2)(B)(i). “If a party fails to provide information … as
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`required by Rule 26(a) … the party is not allowed to use that information … at a trial, unless
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`the failure was substantially justified or harmless.” FED. R. CIV. P. 37(c)(1). In the Third Circuit,
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`a court may exclude untimely expert opinions after analyzing the Pennypack factors. See
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`ZF Meritor, LLC v. Eaton Corp., 696 F.3d 254, 298 (3d Cir. 2012).
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`3.
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`After submitting an expert report, an expert’s deposition testimony isn’t
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`limited to “simply reading his report.” Emcore Corp. v. Optium Corp., No. CIV.A. 6-1202,
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`2008 WL 3271553, at *4 (W.D. Pa. Aug. 5, 2008) (quoting Thompson v. Doane Pet Care
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`Co., 470 F.3d 1201, 1203 (6th Cir. 2006)). That is, Rule 26 does not require “verbatim
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`consistency” between the expert’s report and her testimony. Power Integrations, Inc. v.
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`Fairchild Semiconductor Int'l, Inc., 585 F. Supp. 2d 568, 581 (D. Del. 2008). Expert testimony
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`that “is consistent with the report and is a reasonable synthesis and/or elaboration of the
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`opinions contained in the expert's report” doesn’t violate Rule 26(a)(2)(B). Id. As a result,
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`expert testimony that reiterates or appropriately elaborates on an opinion found in the
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`expert’s report won’t be excluded under Rule 37(c)(1). See Dow Chem. Co. v. Nova
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`Chemicals Corp. (Canada), No. CIV.A. 05-737-JJF, 2010 WL 2044931, at *2 (D. Del. May 20,
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`2
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`Case 1:17-cv-00770-JDW Document 279 Filed 01/05/24 Page 3 of 5 PageID #: 29536
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`2010); Vectura Ltd. v. GlaxoSmithKline, LLC, No. CV 16-638-RGA, 2019 WL 1436296, at *2
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`(D. Del. Apr. 1, 2019).
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`4.
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`Caterpillar seeks to exclude certain testimony offered by Drs. Meyer, Giles, and
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`Seth because, by Caterpillar’s telling, that testimony constitutes “new opinions.” (D.I. 233 at 2,
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`3, 5.) However, as described below, the opinions Caterpillar cites aren’t actually “new.”
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`Accordingly, I don’t need to reach the Pennypack factors and Rule 37(c)(1) doesn’t give me a
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`basis to exclude the cited testimony.
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`5.
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`Dr. Giles opined in his timely-disclosed rebuttal report that Wirtgen doesn’t
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`infringe Caterpillar’s ‘618 Patent. During his deposition, Wirtgen’s counsel questioned Dr.
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`Giles on the “Spare Parts Manual.” Caterpillar points out that the Spare Parts Manual wasn’t
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`cited in Dr. Giles’s report, and that’s true. But on re-direct, Dr. Giles didn’t proffer a new
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`opinion. Rather, he pointed to an additional piece of evidence that, to him, corroborates his
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`prior opinion of non-infringement. Dr. Giles’s testimony on redirect was consistent with his
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`rebuttal report. That’s a permissible reiteration of his opinion, not a new opinion, so there’s
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`no basis for me to exclude it. See Vectura Ltd., 2019 WL 1436296, at *2.
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`6.
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`Dr. Meyer concluded in his expert report that Wirtgen-branded machines
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`practice the ‘641 Patent. During his deposition, Wirtgen’s counsel questioned Dr. Meyer on a
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`document, Exhibit 252, that Dr. Meyer included in the list of “materials considered” in his
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`expert report. During that discussion, Dr. Meyer reiterated his position that the Wirtgen
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`machines practice and are the commercial embodiment of the ‘641 Patent. In other words,
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`3
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`Case 1:17-cv-00770-JDW Document 279 Filed 01/05/24 Page 4 of 5 PageID #: 29537
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`Dr. Meyer stuck to his original opinion during his deposition. Caterpillar says that Dr. Meyer
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`didn’t opine on Exhibit 252 in a detailed way in his expert report. But just because Dr. Meyer
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`elaborated on his prior opinion during his deposition, or explained the way that he relied on
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`one of the documents disclosed in his report, isn’t a reason to exclude this testimony pursuant
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`to Rule 37(c)(1). See Dow Chem. Co., 2010 WL 2044931, at *2.
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`7.
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`Dr. Seth’s errata aligns with an opinion she disclosed in her expert report. That’s
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`evident because the corrected text of her errata cites exactly where one can find that opinion
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`in her expert report. Caterpillar is free to cross-examine Dr. Seth on her assumptions,
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`methodology, and opinions at trial. And it can ask her about the substantive change in
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`testimony that the errata reflects. But neither Dr. Seth’s deposition testimony nor her errata
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`exceeds the scope of her expert report.
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`8.
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`It’s worth noting that Caterpillar had the opportunity to recross Drs. Giles and
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`Meyer about the documents that they disclosed during their depositions. If it needed more
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`than that, or it needed to follow up on Dr. Seth’s errata testimony, it could have asked me for
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`an opportunity to have Caterpillar’s experts respond or for leave to reopen the expert’s
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`depositions on a limited basis. It didn’t, though. Because the deposition testimony did not
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`disclose new opinions, I will not exclude it under Rule 37.
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`Therefore, it is ORDERED that Defendant Caterpillar, Inc.’s Motion To Strike
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`Untimely New Opinions of Drs. John Meyer, Durham Giles, and Pallavi Seth (D.I. 232) is
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`DENIED.
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`4
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`Case 1:17-cv-00770-JDW Document 279 Filed 01/05/24 Page 5 of 5 PageID #: 29538
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`BY THE COURT:
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`/s/ Joshua D. Wolson
`JOSHUA D. WOLSON, J.
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