Case 1:19-cv-01334-CJB Document 506 Filed 12/07/22 Page 1 of 6 PageID #: 8814
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Civil Action No. 19-1334-CJB
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`MIDWEST ENERGY EMISSIONS
`CORP. and MES INC.,
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`Plaintiffs,
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`v.
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`ARTHUR J. GALLAGHER & CO., et al.,
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`Defendants.
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`MEMORANDUM ORDER
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`The Court, having reviewed Defendants’ “Motion to Strike Portions of Plaintiffs’
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`1.
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`October 25, 2022 Expert Reports of Philip J. O’Keefe (Infringement) and Philip Green
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`(Damages)” (the “Motion”), (D.I. 493), and the parties’ letter briefs relating thereto, (D.I. 494;
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`D.I. 499; D.I. 500), and having heard telephonic argument on December 5, 2022, hereby
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`DENIES the Motion for the reasons set out below.
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`2.
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`The first set of opinions at issue relate to Mr. O’Keefe’s theory that “MerSorb
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`contains bromine ions (Br-)” that in turn constitute the “bromine containing promoter” limitation
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`at issue in the '147 patent. (D.I. 494, ex. A at 132 at ¶ 124, 159, 161) The Court is not persuaded
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`that Mr. O’Keefe’s theory is an entirely new and different theory from that earlier set out in
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`Plaintiffs’ Response to Defendants’ Second Set of Common Interrogatories (“Response”), No.
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`12 (“ROG 12”), as the Court understands that submission. (D.I. 494, ex. C at 4; see also D.I.
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`499 at 1-2) To be sure, Plaintiffs’ Response to ROG 12 does not expressly state that “MerSorb
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`contains bromine ions (Br-) which are a bromine containing promoter”; it might have been
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`preferable had the Response been that precise on this point. But the Response does appear to be
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`attempting to communicate essentially the same thing, such as when it explains that “Mer-Sorb is
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`Case 1:19-cv-01334-CJB Document 506 Filed 12/07/22 Page 2 of 6 PageID #: 8815
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`a bromine containing promoter [and] [a]s it passes through the combustion chamber, Mer-Sorb
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`transitions to a gaseous, vapor, or non-aqueous liquid form” that, in this form, “reacts with
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`activated carbon to form a promoted brominated sorbent.” (D.I. 494, ex. C at 4; see also D.I.
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`499 at 1 (describing the chemical operation of MerSorb)) What was conveyed here was
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`sufficient to put Defendants on notice of Plaintiffs’ position, and to allow Defendants to inquire
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`further about that position during fact discovery, had they wished to do so. Now, in expert
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`discovery, Mr. O’Keefe is further articulating this theory. See TQ Delta, LLC v. ADTRAN, Inc.,
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`Civil Action No. 14-954-RGA, 2021 WL 3633637, at *2 (D. Del. Aug. 17, 2021) (noting that an
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`expert is entitled to expand upon a previously-disclosed infringement theory). Therefore, the
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`Court cannot find that Mr. O’Keefe’s theory regarding the bromine containing promoter is
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`untimely.
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`3.
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`The second set of opinions at issue are Mr. Green’s opinions regarding the ADA-
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`ES license. (D.I. 494, ex. B at ¶¶ 174-79) The Court agrees with Defendants that Plaintiffs
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`failed to timely disclose the publicly-available ADA-ES license (one that Plaintiffs and their
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`expert seemingly could have earlier located at any time during the fact discovery period) as a
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`comparable license. (D.I. 494 at 1; D.I. 500 at 1-2) However, the Pennypack factors do not
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`weigh in favor of striking Mr. Green’s opinions regarding this license. At the outset, the Court
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`has to be mindful of the United States Court of Appeals for the Third Circuit’s guidance that
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`“[e]xclusion of critical evidence is an extreme sanction, not normally to be imposed absent a
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`showing of willful deception or flagrant disregard of a court order by the proponent of the
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`evidence.” In re Paoli R.R. Yard PCB Litig., 35 F.3d 717, 791-92 (3d Cir. 1994) (internal
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`quotation marks and citations omitted). The first Pennypack factor, which considers surprise or
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`prejudice, weighs in favor of Defendants. Surely Defendants would have been surprised to see
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`Case 1:19-cv-01334-CJB Document 506 Filed 12/07/22 Page 3 of 6 PageID #: 8816
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`discussion of this license in Mr. Green’s report, since they had earlier asked Plaintiffs in
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`discovery to identify any comparable licenses, and Plaintiffs had not disclosed this license in
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`response. (D.I. 494 at 1) The second and third Pennypack factors weigh against striking Mr.
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`Green’s opinion, as any discovery that Defendants need regarding this issue should be fairly
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`focused and “tailored[,]” and Defendants should be able to accomplish such discovery without
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`unduly disrupting the pre-trial schedule or threatening the new November 13, 2023 trial
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`date. (Id. at 3 (Defendants noting that they would have “sought tailored discovery from ADA-
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`ES and Clean Coal Solutions” had the ADA-ES license been timely disclosed)) The fourth
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`Pennypack factor also favors Plaintiffs, as there is no indication that their failure to earlier
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`identify the ADA-ES license was the product of bad faith; rather, Plaintiffs assert that they only
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`first thought to search for an ADA-ES-related license when ADA-ES was mentioned in
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`Defendants’ September 29, 2022 interrogatory responses. (D.I. 499 at 2) Finally, the last
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`Pennypack factor is about neutral. While Mr. Green’s reliance on the license (which he
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`describes in some detail in his expert report) indicates that the license is somewhat important to
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`Plaintiffs’ damages case, it is “just one of several agreements considered by Mr. Green[,]” (id. at
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`3), and thus Plaintiffs have other probative evidence on this front. With the Pennypack factors
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`leaning slightly in favor of Plaintiffs here, the Court will not strike Mr. Green’s opinions
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`regarding the ADA-ES license. However, Defendants may take targeted discovery relating to
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`that license. The Court expects that the parties will work together cooperatively to attempt to
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`agree on the scope and timing of such discovery and to complete that discovery in a timely
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`fashion.
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`4.
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`The third and final remaining set of opinions at issue are Mr. O’Keefe’s opinions
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`regarding pre-suit knowledge and intent. Certain facts included in these opinions do appear to
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`Case 1:19-cv-01334-CJB Document 506 Filed 12/07/22 Page 4 of 6 PageID #: 8817
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`have been previously disclosed. (Compare D.I. 494, ex. A at 101 at ¶ 132, with D.I. 499, ex. F at
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`28) However, the Court agrees with Defendants that at least certain aspects of these opinions are
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`untimely, in that some of the content that Mr. O’Keefe discusses therein does not appear to have
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`been previously disclosed, either in the Fourth Amended Complaint or elsewhere. Certain of this
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`material should have been long known to Plaintiffs, such as the identity of certain articles and
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`reports published by the inventors of the patents-in-suit. (See, e.g., D.I. 494, ex. A at 92 at ¶
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`118) In other cases, Plaintiffs asserted (and Defendants did not strongly contest) that Plaintiffs
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`could not have disclosed particular facts much earlier, since Plaintiffs only learned of their
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`existence shortly before Mr. O’Keefe’s report was due (in that the facts were found in e-mails
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`produced by Defendants a few weeks before or after the close of fact discovery). (D.I. 499 at 4
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`(citing D.I. 494, ex. A at ¶¶ 121-22); see also D.I. 500 at 2) In the end though, even if the Court
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`were to apply the Pennypack factors to the late-disclosed facts/opinions at issue here, striking the
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`material would not be the right result. The first Pennypack factor is mixed, since while
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`Defendants may have been surprised to see facts in Mr. O’Keefe’s report that were not
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`previously set out in discovery responses, some number of those facts were derived from
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`Defendants’ own documents and e-mails. (See D.I. 499 at 4) The second and third Pennypack
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`factors go Plaintiffs’ way, as there would be time to cure any prejudice to Defendants without
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`disrupting the November 2023 trial. Defendants have not identified an outsized amount of
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`discovery that is needed regarding these issues. (D.I. 494 at 3) With respect to the fourth
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`Pennypack factor, it too favors Plaintiffs, as there is no strong indication that Plaintiffs’ failure to
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`timely disclose these facts was the product of bad faith or willful disregard of the rules. And the
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`fifth Pennypack factor also favors Plaintiffs, since the opinions at issue are clearly important,
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`inter alia, to Plaintiffs’ indirect infringement claims. (D.I. 499 at 5) Accordingly, when it
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`Case 1:19-cv-01334-CJB Document 506 Filed 12/07/22 Page 5 of 6 PageID #: 8818
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`comes to these opinions about pre-suit knowledge and intent, nearly all of the Pennypack factors
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`militate against the “extreme sanction” called for by Defendants’ Motion. That said, under the
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`circumstances, the Court again finds that Defendants should be permitted to take “tailored”
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`discovery relating to the previously undisclosed facts regarding pre-suit knowledge and
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`intent. (D.I. 494 at 3 (Defendants noting that they could have sought “tailored discovery . . .
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`from the various non-parties that Mr. O’Keefe claims could have told Defendants about the
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`Asserted Patents” if Mr. O’Keefe’s opinions had been timely disclosed) (emphasis omitted)) As
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`with the supplemental discovery regarding the ADA-ES license, the Court expects that the
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`parties will be able to work cooperatively to negotiate the scope and timing of such discovery,
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`and to complete such discovery in due course.
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`5.
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`Therefore, for the reasons set out above, the Court hereby ORDERS that
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`Defendants’ Motion is DENIED.
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`6.
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`Because this Memorandum Order may contain confidential information, it has
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`been released under seal, pending review by the parties to allow them to submit a single, jointly
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`proposed, redacted version (if necessary) of the Memorandum Order. Any such redacted version
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`shall be submitted no later than December 12, 2022 for review by the Court. It should be
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`accompanied by a motion for redaction that shows that the presumption of public access to
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`judicial records has been rebutted with respect to the proposed redacted material, by including a
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`factually-detailed explanation as to how that material is the “kind of information that courts will
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`protect and that disclosure will work a clearly defined and serious injury to the party seeking
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`closure.” In re Avandia Mktg., Sales Pracs. & Prods. Liab. Litig., 924 F.3d 662, 672 (3d Cir.
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`2019) (internal quotation marks and citation omitted). The Court will subsequently issue a
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`publicly-available version of its Memorandum Order.
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`Case 1:19-cv-01334-CJB Document 506 Filed 12/07/22 Page 6 of 6 PageID #: 8819
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`Dated: December 7, 2022
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`____________________________________
`Christopher J. Burke
`UNITED STATES MAGISTRATE JUDGE
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`6
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