Kawasaki Jukogyo Kabushiki Kaisha v. Rorze Corporation

Background

Kawasaki moved under Patent Local Rule 3-3, Federal Rules of Civil Procedure 26 and 37, and the court’s inherent authority to strike portions of Dr. Richard Hooper’s Opening Expert Report Regarding Invalidity. Dr. Hooper had been disclosed as an expert witness for Rorze Corporation and Rorze Automation, Inc., which the opinion collectively calls “Rorze.”

Kawasaki challenged two categories of material: invalidity theories that Rorze had not disclosed in its amended invalidity contentions, and invalidity theories that exceeded the numerical limit established by the parties’ stipulation and the court’s order. Patent Local Rule 3-3 requires invalidity contentions to identify whether prior art anticipates asserted claims or renders them obvious, and to specify where each claim limitation appears in each item of alleged prior art.

Related Art Figure 15

The court found that Rorze relied on Related Art Figure 15 of the asserted patents as a basis for invalidity for the first time in Dr. Hooper’s report. Although Rorze argued that it used the figure only as evidence of the state of the art, the report stated that Kazunari did not expressly disclose four openings but that the claimed arrangement would have been obvious in light of systems shown in Related Art Figure 15. The court determined that this use made Figure 15 a prior-art reference that should have been disclosed in Rorze’s invalidity contentions.

The court granted Kawasaki’s motion to strike all citations to, and arguments, opinions, and theories based on, Related Art Figure 15. The stricken material included specified entries in Dr. Hooper’s exhibits concerning claim elements 6[a], 6[b], 13[a], 13[b], 20[a], 20[b], 27[a], and 27[b]. Dr. Hooper may not testify at trial about the substance of the stricken material.

Obviousness Combinations

Kawasaki also argued that Dr. Hooper’s alternative rationales for combinations involving Kazunari, the SEMI E63 Standard, NX-EFEM, RS70000, and Fukasawa exceeded the limit of five obviousness combinations per asserted patent. The court denied this part of Kawasaki’s motion to strike. It concluded that, although Kawasaki believed the alternative rationales did not narrow the issues as much as expected, Rorze’s approach complied with the express wording of the court’s order. Dr. Hooper may testify at trial about those matters.

Disposition

The court granted Kawasaki’s motion to strike references to Related Art Figure 15 and denied Kawasaki’s motion to strike Rorze’s invalidity theories that exceeded five obviousness combinations per asserted patent. This order addressed the scope of expert testimony and disclosed invalidity theories; it did not decide whether the asserted patents were valid or invalid.