Borgwarner Inc. v. Honeywell Int'l Inc.

750 F.Supp.2d 596

BORGWARNER, INC. and BorgWarner Turbo Systems, Inc., Plaintiffs,

v.HONEYWELL INTERNATIONAL, INC., Defendant.

Civil Case No. 1:07cv184.

United States District Court, W.D. North Carolina,Asheville Division.

Sept. 27, 2010.

David M. Barkan, Erin Elizabeth Kaiser, Corrin Nicole Drakulich, Leeron G. Kalay, Fish & Richardson P.C., Redwood City, CA, Joshua A. Griswold, Fish & Richardson, P.C., Dallas, TX, Larry Stephen McDevitt, Van Winkle, Buck, Wall, Starnes and Davis, P.A., Asheville, NC, Ralph Adam Phillips, Fish & Richardson, P.C., Washington, DC, for Plaintiffs.Forrest A. Ferrell, Matthew James Middleton, Sigmon, Clark, Mackie, Hutton, Hanvey & Ferrell, P.A., Hickory, NC, Marc H. Cohen Philip Chen, Robert G. Krupka, Kirkland & Ellis LLP, Los Angeles, CA, for Defendant.

MEMORANDUM OF DECISION AND ORDER

MARTIN REIDINGER, District Judge.

THIS MATTER is before the Court on the Plaintiffs' Motion to Exclude from Evidence Expert Testimony of Christopher Reed, John T. Goolkasian, and Brent Robinson [Doc. 104] and the Defendant's Motion to Exclude Certain Expert Opinions of Dr. J.C. Poindexter, Paul Novak, and Dr. John Thorne [Doc. 118].

I. INTRODUCTION

This is an action brought by the Plaintiffs BorgWarner, Inc. and BorgWarner Turbo Systems, Inc. (collectively “BorgWarner”) against the Defendant Honeywell International, Inc. (“Honeywell”) for patent infringement of U.S. Patent Nos. 6,663,347(“the '347 Patent”); 6,629,556 (“the '556 Patent”); and 6,904,949 (“the '949 Patent”). [Second Amended Complaint, Doc. 65]. The patents-in-suit are directed to an investment cast titanium compressor wheel, and specifically a wheel that is manufactured by a fully automated process and that is “pullable.” As that term has been construed by the Court, “pullable” refers to the ability during the manufacturing process to withdraw the die inserts used to cast the wheel radially or along a curvature so as to render the wax pattern easily removable from the die. [Claim Construction Order, Doc. 79–1 at 52].¹

Honeywell denies engaging in any infringement and asserts, among other things, the affirmative defenses of invalidity, unenforceability, inequitable conduct, and license and/or ownership of the patents-in-suit. With respect to the defense of invalidity, Honeywell contends that pullable cast titanium compressor wheels existed long before the patent applications were filed. Specifically, Honeywell contends that as early as 1996, a tool was developed by toolmaker B & R Mold to create wax patterns for a pullable cast titanium compressor wheel (the “Holset Wheel”).² Honeywell contends that the Holset Wheel and its method of manufacture anticipates or renders obvious every limitation of the claims asserted by BorgWarner in this case. [ See Honeywell's Motion for Summary Judgment, Doc. 110 at 6–7]. BorgWarner contends that the Holset Wheel does not invalidate the patents-in-suit, because the tooling which was used to manufacture the Holset Wheel pattern was not fully automated, and the resulting wheel had such complex retraction paths that the wheel could not be considered “pullable.” [ See BorgWarner's Opposition to Honeywell's Motion for Summary Judgment, Doc. 129 at 6–13].

II. STANDARD OF REVIEW

The parties' motions to exclude [Docs. 104, 118] challenge the reliability and admissibility of certain expert opinions pursuant to Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). Rule 702 provides as follows:

If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.

Fed. R. Evid. 702. The trial judge must act as a gatekeeper, admitting only that expert testimony which is relevant and reliable. Daubert, 509 U.S. at 589, 113 S.Ct. 2786. With regard to scientific knowledge, the trial court initially must determine whether the reasoning or methodology used is scientifically valid and is applied properly to the facts at issue in the trial. Id. at 592–93, 113 S.Ct. 2786. To aid the Court in this gatekeeping role, the Supreme Court has identified several key considerations, including whether the expert opinion can be tested; whether it has been subjected to peer review; the error rate of the methods that the expert employed; the existence and maintenance of standards used in the expert's methods; and whether the expert's methods are generally accepted in the scientific community. Id. at 592–94, 113 S.Ct. 2786; Anderson v. Westinghouse Savannah River Co., 406 F.3d 248, 261 (4th Cir.2005).³

The objective of Daubert's gatekeeping requirement is to ensure “that an expert, whether basing testimony upon professional studies or personal experience, employs in the courtroom the same level of intellectual rigor that characterizes the practice of an expert in the relevant field.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 152, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999). The Court has broad discretion in determining whether the Daubert factors reasonably measure reliability in a given case. Id. at 153, 119 S.Ct. 1167.

III. BORGWARNER'S MOTION TO EXCLUDE EXPERT TESTIMONYA. Brent Robinson

BorgWarner seeks to exclude the testimony of Honeywell's designated expert Brent Robinson on the grounds that Robinson failed to provide a written expert report, as required by Federal Rule of Civil Procedure 26(a)(2)(B). [Doc. 105 at 22–30]. Honeywell counters that Robinson's testimony is purely factual testimony, and that he was designated as an expert only out of an abundance of caution because he is a person with specialized knowledge. Even if Robinson's testimony could be considered expert testimony, Honeywell contends, Robinson did not have to provide a written report because he was not “retained or specially employed” to provide expert testimony on behalf of Honeywell. Alternatively, Honeywell contends that any harm suffered by BorgWarner as a result of the failure to provide a written report is self-inflicted, as BorgWarner has had ample opportunity to conduct discovery about Robinson's expert opinions but has declined to do so. [Doc. 140 at 22–29].

1. Relevant Facts

Brent Robinson is the founder and president of B & R Mold, a company that makes tools used in investment casting. [Corrected Declaration of Brent Robinson, Doc. 41–2 at ¶¶ 2, 5]. He has made tools and die assemblies for BorgWarner, Honeywell, and Holset, including the tool developed in 1996 to manufacture the Holset Wheel (“the 1996 Tool”) and the die assembly used to manufacture the BorgWarner compressor wheel that is the subject of the patents-in-suit. [ Id. at ¶¶ 6–10].

In 2003, Honeywell entered into an Assignment and License Back agreement with B & R Mold, Brent Robinson and Steve Reigel (an employee of B & R Mold), by which Honeywell agreed to pay B & R Mold, Robinson and Reigel a total of $15,000 in exchange for their assignment of any rights they had in the subject patent applications. Additionally, as part of this agreement, B & R Mold, Robinson and Reigel agreed to “cooperate fully ... and provid[e] all needed truthful testimony ... if at any time [Honeywell] is threatened or sued with an infringement action based upon any patent or patent application pertaining to the assigned inventions....” [Assignment and License Back, Doc. 107–8].

On May 8, 2009, Robinson was deposed in his personal capacity as a fact witness. [Declaration of Katherine D. Prescott (“Prescott Decl.”), Doc. 107 at ¶ 17]. The day after this deposition, Honeywell disclosed Robinson as “a person who may provide evidence under Rules 702, 703 or 705 of the Federal Rules of Evidence.” [Disclosure of Expert Testimony, Doc. 107–9]. BorgWarner, however, was not provided with a written report. In response to BorgWarner's inquiry as to why no report was provided, Honeywell contended that Robinson was not obligated to provide a written report because he had not been retained or specially employed to provide expert testimony on behalf of Honeywell. [Letter dated July 28, 2009, Doc. 107–10]. Unbeknownst to BorgWarner at the time, however, Honeywell's in-house litigation counsel had agreed to pay Robinson $105,000 for the design and construction of an automated tool to produce patterns for the Holset Wheel (the “2009 Tool”) in order to test the hypothesis that the 1996 Tool could have been made fully automated, even though no such tool had been made at that time. [Email dated July 14, 2009, Doc. 107–13; Email dated July 17, 2009, Doc. 107–14].

Robinson was deposed for a second time on August 28, 2009. At this deposition, Robinson testified as follows:

Q In our first day of our deposition we discussed a July 1st, 2003 Assignment and License Back Agreement that you entered into and your company entered into with Honeywell. Do you remember discussing that agreement?

A Yeah.

Q And as part of that agreement there was a $15,000 payment from Honeywell to B & R Mold; is that correct?

A Yes.

Q Aside from that payment, as you sit here today have you received any other payment from Honeywell that in any way would be related to this case?

A No.

* * *

Q Since your last deposition, the first day of your deposition, have you spoken to anyone at Honeywell regarding your deposition testimony?

A No.

Q And again since your last deposition have you discussed the litigation more generally with anyone from Honeywell?

A No.

* * *

Q And since your first deposition, have you had any conversations with anyone about the case itself?

* * *

A Maybe my wife.

Q Beside from your wife, no one else?

A No.

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