Corning Incorporated v. Wilson Wolf Manufacturing Corporation

Background

Corning filed four motions in this patent case: two motions to strike portions of defense expert disclosures, a motion to compel production of John R. Wilson’s notebooks, and a motion to exclude spreadsheets and related testimony concerning diligence in reducing the ’317 Patent invention to practice.

Motions to Strike

The first motion challenged portions of Dr. Maury Cosman’s reply expert report concerning Corning’s HYPERStack device and Wilson Wolf’s ’192 Patent. Corning argued that the report introduced a new infringement theory, was untimely, and violated the parties’ stipulation that Wilson Wolf would not provide expert reports opposing Corning’s claims that it did not infringe the ’192 and ’443 Patents.

The court denied the motion. It concluded that Dr. Cosman’s reply did not introduce a new infringement theory, but instead applied Wilson Wolf’s previously disclosed theory that HYPERStack was not compartmentalized by a semi-permeable membrane. The court also concluded that the opinions responded to Dr. Jeffrey Chalmers’s opinions concerning Corning’s tortious-interference claim, on which Corning had the burden of persuasion, and therefore did not have to appear in Dr. Cosman’s opening report. The court further found no violation of the parties’ stipulation.

The second motion challenged portions of Wilson Wolf’s disclosure concerning John R. Wilson’s anticipated testimony about whether HYPERStack infringed claims 6, 7, and 9 of the ’317 Patent. Corning argued that references to “standoffs” or “little legs” introduced a new infringement theory beyond the claim chart. The court denied this motion as well, finding that the disclosure provided additional detail and cited deposition and trial testimony about structures already covered by the previously disclosed infringement theory.

Motion to Compel Notebooks

Corning sought Wilson’s notebooks for June 23, 2007 through May 5, 2009, and July 14, 2011 through January 2021. Corning argued that the notebooks were responsive to its request for documents and communications relating to whether HYPERStack infringed the patents at issue. Wilson Wolf argued that the notebooks were irrelevant, burdensome, privileged, and requested too late.

The court found the notebooks relevant to Corning’s claim for a declaration that HYPERStack and its use did not infringe Wilson Wolf’s patents. It rejected the burden objection, noting that Wilson Wolf had already produced other notebooks and had not shown that the requested production’s burden outweighed its potential benefit. The court also found that the discovery request covered documents, not only communications, and that the notebooks therefore fell within the request.

The court found both the original and supplemental privilege logs insufficient because they did not identify attorneys or meaningfully describe the scope of the withheld materials. It ordered Wilson Wolf to produce redacted versions of the responsive notebooks for the two specified periods and to provide a sufficient third privilege log within 21 days. The court granted in part and denied in part the motion to compel: the request for production and a new privilege log was granted, while the alternative request for an in-camera review—a private court review—was denied as unnecessary. No attorney’s fees were awarded on the motion.

Motion to Exclude

Corning sought to exclude spreadsheets produced shortly before and after Wilson’s deposition, along with testimony based on them. Corning argued that the spreadsheets presented an untimely and undisclosed diligence theory concerning the period from February 18, 2004 through July 25, 2005.

The court denied the motion. It found that the spreadsheets summarized documents Wilson Wolf had previously produced and were not undisclosed expert opinions. Wilson Wolf represented that Wilson would provide factual testimony based on his personal knowledge, not expert testimony stating that the work satisfied the legal diligence standard. The court also explained that whether the spreadsheets qualify as summaries under Federal Rule of Evidence 1006 or as demonstrative evidence was a trial issue for the trial judge.

Disposition

The court ordered the following: both motions to strike were denied; the motion to compel was granted in part and denied in part; and the motion to exclude was denied. The order left prior consistent orders in force and stated that noncompliance could lead to appropriate remedies or sanctions.