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UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA

Bombardier Recreational Products, Inc., et al.,

Court File No. 12-cv-2706 (ADM/LIB) Plaintiffs,

ORDER v.

Arctic Cat, Inc., et al., Defendants.

This matter comes before the undersigned United States Magistrate Judge pursuant to a

general assignment made in accordance with the provision of 28 U.S.C. § 636(b)(1), and upon

Defendants Arctic Cat, Inc. and Arctic Cat Sales, Inc.’s (collectively “Arctic Cat”) Motion to

Compel BRP Experts to Respond Fully to Subpoenas, to Answer Questions on Which BRP

Experts Were Instructed Not to Answer, and to Comply with the Second Amended Pretrial

Scheduling Order, as Amended, and Fed. R. Civ. P. 26 (“Arctic Cat’s Mot. to Compel”), [Docket

No. 587]; Arctic Cat’s Motion to Strike BRP’s Expert Reports of Robert Larson and Portions of

Other BRP Expert Reports (“Arctic Cat’s Mot. to Strike”), [Docket No. 614]; Bombardier

Recreational Products, Inc. and BRP US, Inc.’s (collectively “BRP”) Motion to Transfer Venue

Pursuant to 28 U.S.C. § 1404(b) (“BRP’s Mot. to Transfer Venue”), [Docket No. 591]; BRP’s

Motion to Strike Portions of Defendants’ Expert Reports (“BRP’s Mot. to Strike”), [Docket No.

597]; and BRP’s Motion to Compel Additional Discovery Within the Scope of Arctic Cat’s

Waiver of Privilege for Advice of Counsel Defense (Deposition and In Camera Document

Review and Rulings on Arctic Cat’s Claims of Privilege) (“BRP’s Mot. to Compel”). [Docket

No. 601]. The Court held a motion hearing on March 3, 2016, and the Court took the motions

under advisement at that time.

CASE 0:12-cv-02706-JRT-LIB Document 704 Filed 04/19/16 of 62

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For the reasons discussed below, the Court:

1. GRANTS in part and DENIES in part Defendants Arctic Cat’s Motion to Compel

BRP Experts to Respond Fully to Subpoenas, to Answer Questions on Which BRP

Experts Were Instructed Not to Answer, and to Comply with the Second Amended

Pretrial Scheduling Order, as Amended, and Fed. R. Civ. P. 26, [Docket No. 587], as

set forth below;

2. GRANTS in part and DENIES in part Arctic Cat’s Motion to Strike BRP’s Expert

Reports of Robert Larson and Portions of Other BRP Expert Reports, [Docket No.

614], as set forth below;

3. DENIES BRP’s Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(b), [Docket

No. 591], as set forth below;

4. GRANTS in part and DENIES in part BRP’s Motion to Strike Portions of

Defendants’ Expert Reports, [Docket No. 597], as set forth below; and

5. DENIES BRP’s Motion to Compel Additional Discovery Within the Scope of Arctic

Cat’s Waiver of Privilege for Advice of Counsel Defense (Deposition and In Camera

Document Review and Rulings on Arctic Cat’s Claims of Privilege), [Docket No.

601], as set forth below.

I. BACKGROUND

The present case involves multiple allegations of patent infringement. Plaintiff BRP

alleges three counts of patent infringement against Arctic Cat concerning snowmobile frame

construction and snowmobile rider positioning. (Amended Compl., [Docket No. 21], at Counts I,

II, and IV). BRP alleges patent infringement by at least 91 Arctic Cat snowmobiles regarding

two frame patents (‘847 and ‘848), as well as, infringement by at least 95 Arctic Cat


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snowmobiles regarding the seat position patent (‘669). For its Counterclaim, Arctic Cat alleges

non-infringement and invalidity in light of prior art technology.

The facts and background relative to each motion are given in the section of this Order

directly related to each motion.

The Court notes that the parties provided the Court with almost 6,000 pages of exhibits,

and upon full review of those documents, at maximum, only 10% were found relevant or

pertinent. At the motions hearing, the Court admonished counsel for both parties that “paper for

the sake of paper” helps no one. The parties are reminded that such conduct obfuscating what is

material and important in the record should not be continued going forward. Within this order,

the Court does not reference all the documents, and instead, it only references those pages which

were relevant.

II. ARCTIC CAT’S MOTION TO COMPEL BRP EXPERTS TO RESPOND FULLY TO SUBPOENAS, TO ANSWER QUESTIONS ON WHICH BRP EXPERTS WERE INSTRUCTED NOT TO ANSWER, AND TO COMPLY WITH SECOND AMENDED PRETRIAL SCHEDULING ORDER, AS AMENDED, AND FED. R. CIV. P. 26. [DOCKET NO. 587].

Arctic Cat moves the Court to compel BRP (1) experts Robert Larson, Christine Raasch,

Kevin Breen, Gerald Karpik, Gary Gilbertson, and Claude Gelinas to produce all of the

information sent to BRP or its counsel regarding billing for work on the present case, as well as

for, BRP’s lawsuit against Arctic Cat regarding frame and rider position patents pending in

Canadian federal court; (2) to produce any documents, notes, or emails exchanged between BRP

experts Robert Larson and Christine Raasch; and (3) to instruct it experts to answer Arctic Cat’s

deposition questions to which BRP counsel instructed it experts not to answer.1

1 Arctic Cat also moved for an order compelling Mr. Larson to produce an Arctic Cat service manual which Mr. Larson consulted while forming the opinions contained in his report. (Arctic Cat’s Mem., [Docket No. 594], at 11). BRP, however, asserts in its written submission that it will provide Arctic Cat with said service manual. (BRP’s


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A. Standard of Review

Federal Rule of Civil Procedure 26(b)(1) provides that “[p]arties may obtain discovery

regarding any nonprivileged matter that is relevant to any party’s claim or defense.” Fed. R. Civ.

P. 26(b)(1). With regard to disclosure of materials related to experts, the Federal Rules of Civil

Procedure provide:

Trial-Preparation Protection for Communications Between a Party’s Attorney and Expert Witnesses. Rules 26(b)(3)(A) and (B) protect communications between the party’s attorney and any witness required to provide a report under Rule 26(a)(2)(B), regardless of the form of the communications, except to the extent that the communications: (i) relate to compensation for the expert’s study or testimony; (ii) identify facts or data that the party’s attorney provided and that the expert considered in forming the opinions to be expressed; or (iii) identify assumptions that the party's attorney provided and that the expert relied on in forming the opinions to be expressed.

Fed. R. Civ. P. 26(b)(4)(C). As well as:

Witnesses Who Must Provide a Written Report. Unless otherwise stipulated or ordered by the court, this disclosure must be accompanied by a written report--prepared and signed by the witness--if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party's employee regularly involve giving expert testimony. The report must contain: . . . (i) a complete statement of all opinions the witness will express and the basis and reasons for them [and] (ii) the facts or data considered by the witness in forming them[.]

Fed. R. Civ. P. 26(a)(2)(B) (emphasis added).

Mem., [Docket No. 625], at 11). Therefore, to the extent Arctic Cat’s motion seeks the service manual, the motion is DENIED as moot. Arctic Cat also requested an order reconvening Mr. Gelinas’ deposition and requiring BRP to reimburse Arctic Cat for its cost to resume the deposition of BRP damages expert Mr. Gelinas. Since the filing of Arctic Cat’s motion the deposition of Mr. Gelinas has been reconvened and Arctic Cat was permitted to ask all the questions it sought to ask. (Motion Hearing, Digital Recording at 10:17–10:18). Therefore, to the extent Arctic Cat’s motion seeks to reconvene the deposition of Claude Gelinas, the motion is DENIED as moot. Further, to the extent Arctic Cat’s motion seeks an order requiring BRP to reimburse Arctic Cat for its cost to resume the deposition of BRP damages expert Mr. Gelinas, the motion is DENIED.


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The overwhelming weight of the caselaw is clear that an expert is required to provide the

facts and data that the expert reviewed in preparing the opinion, regardless of whether the expert

actually ultimately relied on the facts and data in formulating the opinion. See, e.g., Damgaard v.

Avera Health, No. 13-cv-2192 (RHK/JSM), 2015 WL 4993701, at *4 (D. Minn. June 18, 2015);

McCormick v. Halliburton Energy Services, Inc., No. 11-cv-1272, 2015 WL 2345310, *2 (W.D.

Okla. May 14, 2015) (“For Rule 26 purposes, a testifying expert has ‘considered’ data or

information if the expert has read or reviewed the privileged materials before or in connection

with formulating his or her opinion”).

B. Facts

Robert Larson is an expert retained by BRP to produce an Initial Infringement Report on

the ‘669 patent and a Rebuttal Report to the invalidity of the ‘669 patent. Christine Raasch is an

expert retained by BRP related to the infringement of the ‘669 patent. Larson and Raasch are

both employed by Exponent. Kevin Breen is a BRP expert regarding the infringement of the

‘669, ‘847, and ‘848 patents and presented a rebuttal opinion as to the invalidity of the ‘847 and

‘848 patent. Gerald Karpik provided a rebuttal opinion as to the invalidity of the ‘847 and ‘848

patent. Gary Gilbertson provided a rebuttal opinion as to the invalidity of the ‘669 patent. Keith

Ugone provided an opinion as to lost profit and royalty-based damages. Claude Gelinas provided

an opinion as to a financial profit analysis.

C. Analysis

Each of Arctic Cat’s requests is taken in turn below.

1. Arctic Cat’s Request for Detailed Billing Information in the Present Case and the Canadian Litigation

As noted above, Arctic Cat moves to compel experts Robert Larson, Christine Raasch,

Kevin Breen, Gerald Karpik, Gary Gilbertson, and Claude Gelinas to produce all of the


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information sent to BRP or its counsel regarding billing for work on the present case, as well as

for, BRP’s lawsuit against Arctic Cat regarding frame and rider position patents pending in

Canadian federal court. In its memorandum of law, however, Arctic Cat only provides arguments

as to Robert Larson, Christine Raasch, and Claude Gelinas. As Arctic Cat does not provide any

reasoning or argument, factual or legal, as to why the detailed billing information of Kevin

Breen, Gerald Karpik, and Gary Gilbertson should be produced, the Court does not now consider

billing as to those experts. See Henderson ex rel. Henderson v. Shinseki, 562 U.S. 428, 434

(2011) (“Under [our adversarial] system, courts are generally limited to addressing the claims

and arguments advanced by the parties. Courts do not usually raise claims or arguments on their

own.”).

Larson and Raasch are both employed by Exponent, and they were retained by BRP in

both the present case and the Canadian case also between the present parties. BRP has disclosed

to Arctic Cat a summary of the compensation which Larson and Raasch received, but only such

information which BRP classified as related to the present U.S. action. Arctic Cat seeks the

billing information related to the Canadian case as well.

In a deposition question, Arctic Cat’s counsel asked Raasch whether “[to her] knowledge,

[was] there any way to separate the billing that went into the 2013 reports into a Canadian file

versus a U.S. file?” (Daley Decl., [Docket No. 589-3], Ex. 18 at 26:21–26:23). Raasch responded

that for her work, she did not “imagine that there is. The hour—the time that I spent as far as my

participation in that, I wouldn’t be able to separate whether it was Canadian or U.S. any work

I’ve done this year I could separate because it’s separated in time, but not for the – not for these

reports.” (Id. at 26:24–27:5). From the deposition, on the record provided, it appears by “these

reports” Raasch is referring to the 2012 reports related to snowmobile testing work she and


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Larson performed for both the U.S. and Canadian cases in 2012. (Id. at 25:22–27:5). Raasch did

note that when it came to other people working on the project and whether their time was

separable, Larson would be the person to best address that issue. (Id. at 27:6–27:13). While

Raasch does note that she does not consider her Canadian Expert Report directly relevant to the

present case, (Conneely Decl., [Docket No. 626-4], Ex. N at 49:23–49:25), Raasch does state

that the testing work performed for the two cases is overlapping and inseparable. BRP does not

provide any testimony from Larson’s deposition that contradicts these statements related to

separation of the billing.

Arctic Cat is entitled to communications between BRP and its experts related to

compensation for the experts’ study or testimony. See Fed. R. Civ. P. 26(b)(4)(C). That includes

compensation which BRP self-labels as related to the Canadian litigation, to the extent the expert

identifies the compensation billing as inseparable. Raasch has testified that the testing

conducting in 2012, overlapped the two different cases, and that the billing related thereto was

inseparable, and therefore, Arctic Cat is entitled to that compensation information. Arctic Cat is

entitled to any compensation information between BRP and its experts, Larson and Raasch, to

the extent the work in the Canadian case for which BRP is being billed is used, relied upon, or

considered in the present case or is inseparable from the work in the present case, even if BRP

has self-labelled that compensation information as related to the Canadian case. Id.

Arctic Cat is entitled to those compensation communications in the form in which they

currently exist, not in a summary form prepared by BRP. See Fed. R. Civ. P. 26(b)(4)(C)

(referring to and applying to communications “regardless of the form of the communications”);

see also Amster v. River Capital Intern Group, LLC, 2002 WL 2031614 at *1 (S.D.N.Y. Sept. 4,

2002) (noting that other courts have ordered disclosure of expert compensation in various forms


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including the production of all invoice created by experts). To the extent those invoice or

communications contain information not related to compensation, the information may be

redacted, as Arctic Cat is only, in this circumstance, requesting and entitled to information

related to compensation.

Therefore, to the extent Arctic Cat’s motion seeks information related to compensation of

Raasch and Larson, the motion is GRANTED as set forth above.

Arctic Cat’s motion also seeks detailed billing information as to Claude Gelinas in both

the Canadian case and the present U.S. case. Mr. Gelinas, at his deposition, explicitly stated that

he started from the Canadian report and made few changes when creating the report for the

present U.S. case. (Daley Decl., [Docket No. 589], Ex. 25, at 10:23–11:4). Specifically, when

Arctic Cat asked Mr. Gelinas who prepared his Expert Report, the following exchange took

place:

A. I wrote the report, and it was modified by a person at my office who is an English speaker. Q. When you wrote the report did you write it in English?

A. Yes. Q. And who is the person in your office who you say modified the report?

A. It was modified more in the Canadian case because the methodology that was used for the U.S. case was very similar or the same. So I started out with a report that had already been revised and had already been filed in the Canadian courts. So far the U.S. case there were a lot fewer changes to be brought.

(Id. at 10:15–11:4). From his deposition, it appears evident that Mr. Gelinas is testifying that he

started with a complete report from the Canadian trial and only slightly modified it in order to

submit it for the present U.S. trial. As the Canadian report was used as the material and

substantial basis for Gelinas’ expert report in the present case, his work and compensation


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related to the Canadian report is relative to the compensation he received in preparing his present

expert report.

Arctic Cat is entitled to communications between BRP and Gelinas related to

compensation for his testimony which, based on Mr. Gelinas’ deposition, includes compensation

that BRP self-labeled as Canadian trial compensation. See Fed. R. Civ. P. 26(b)(4)(C). Arctic Cat

is entitled to those compensation communications in the form in which they currently exist not in

a summary form prepared by BRP. See Fed. R. Civ. P. 26(b)(4)(C); see also Amster, 2002 WL

2031614 at *1. To the extent those invoice or communications contain information not related to

compensation, the information may be redacted, as Arctic Cat is only, in this circumstance,

requesting and entitled to information related to compensation

Therefore, to the extent Arctic Cat’s motion seeks information related to compensation of

Claude Gelinas, the motion is GRANTED as set forth above.

2. Arctic Cat’s Request for an Order Compelling BRP to Produce Any Documents, Notes, and/or Emails Exchanged Between BRP Experts Robert Larson and Christine Raasch

Arctic Cat moves the Court for an order compelling BRP to produce any documents,

notes or emails exchanged between BRP experts Larson and Raasch; however, in its written

memorandum of law, the only actual request Arctic Cat makes for documents exchanged

between the two experts is a reference to draft expert reports exchanged between the two experts.

As those draft reports are the only documents which Arctic Cat identifies, those draft reports are

the only documents as to which the Court now conducts its analysis.

In his deposition, Larson testified that he reviewed Raasch’s expert report and she

reviewed his expert report, as a quality assurance measure. (Daley Decl., [Docket No. 589-3],


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Ex. 16 at 26–28). Upon Arctic Cat’s counsel’s questioning of Larson related to the reviewing of

expert reports the following exchange took place:

Q. [D]id you review her expert report?

A. Yes. Q. Did she review your expert reports?

A. Yes. Q. Did you make any recommended changes to her expert report?

A. Nothing substantial. Q. When you say nothing substantial, are you saying that it was grammar edits?

A. Things like that or just, you know, if’s [sic] there’s a certain point that I felt needed clarification, might have been that. Rarely do I ever view a report and not have at least, you know, some suggestion on it. Q. Did she have any suggestions or clarification to your reports?

A. I don’t remember specifically, but I –I would certainly assume she did, but again, nothing substantial. There’s certainly no change of opinions or opinions being dropped or anything like that with regards to my review of her reports or her review of my report. Q. Did you provide her with a draft of your report for her to comment on?

A. A draft that was near the final on, but yeah, it didn’t become a final report until we finished the quality assurance process and part of that was her reviewing the report. Q. So you provided Dr. Raasch with a draft of your reports, both of them?

A. Yes. Q. And then she commented on them and you reviewed those comments?

A. Yes. Q. And she provided you with a draft of her report and you provided comments on that and she reviewed your comments, right?

A. Yes. Q. Before the reports were finalized?

A. Yeah. (Id. at 26:16–28:6). It is clear from Larson testimony that he and Raasch both reviewed the

comments of the other during the course of forming and completing their final expert reports.


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While the Pretrial Scheduling Order does provide that drafts of expert reports shall not

generally be discoverable, (see Pretrial Scheduling Order, [Docket No. 267], as amended, at

(g)(2)(F)]), the Federal Rules of Civil Procedure also provide that a party is entitled to all the

facts and data considered by another party’s expert in forming that expert opinion. Fed. R. Civ.

P. 26(a)(2)(B)(ii). At issue here is not an unadulterated expert report draft copy. At issue here

are three expert report drafts with editorial comments prepared by a different expert, which each

issuing expert reviewed and considered before finalizing their respective expert report. As such,

Arctic Cat is entitled to the comments on the drafts and the portions of the drafts (for context) to

which those comments relate. See Id.

Therefore, to the extent Arctic Cat’s motion seeks the comments and drafts exchanged

between Larson and Raasch, the motion is GRANTED as set forth above.

3. Arctic Cat’s Request for an Order Compelling BRP Experts to Answer Arctic Cat’s Deposition Questions to Which BRP’s Counsel Instructed its Experts Not to Answer

Arctic Cat also moves this Court for an order overruling BRP’s counsel’s instruction not

to answer and compelling Gary Gilbertson and Robert Larson to answer the deposition questions

they each respectively did not answer at their depositions.

A. Gary Gilbertson

As noted above, BRP retained Gary Gilbertson to testify as a rebuttal expert regarding

Arctic Cat’s claim of invalidity related to the ‘669 patent. Gilbertson asserts that he has over 40

years of experience related to snowmobiles and snowmobile components including a long time

understanding of the T&S MOD-III, (Daley Decl., [Docket No. 589-3], Ex. 20 at ¶ 5), and in his

report, he extensively discusses the design, structure, uniqueness, and operation of the T&S

MOD-III snowmobile while discussing his rebuttal opinion to Arctic Cat’s invalidity contentions


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relative to the ‘669 patent claims. (Id. at ¶¶ 45–46, 50, 57–62, 70, 77–80, 108–109, 112, 115–

117, 120).

In his deposition, Arctic Cat’s counsel asked Gilbertson general questions related to the

T&S MOD which he preliminarily answered. Counsel then asked Mr. Gilbertson if he was

“familiar with the structure on the T&S MOD that Arctic Cat is referring to as the pyramidal

brace assembly” and whether “[t]here are front legs and rear legs associated with the T&S

MOD.” (Daley Decl., [Docket No. 589-3], Ex. 21 at 118:1–121:4). BRP’s counsel objected to

these questions as outside the scope of Gilbertson’s report because they related to patent ‘847

and because Gilbertson only offered an opinion rebutting the invalidity of the ‘669 patent. BRP’s

counsel clarified that Arctic Cat’s counsel could ask Mr. Gilbertson questions related to the

structure of the T&S MOD “as it pertain[ed] to Mr. Warner’s analysis in connection with his

expert report based on the validity of the ‘669 as rebutted by Mr. Gilbertson in his Rebuttal

Expert Report[, b]ut if” Arctic Cat’s counsel asked him about structure that relate solely to the

‘847 patent it was outside the scope of his report. (Id. at 120:17–121:4).

Arctic Cat argues that because Gilbertson provides opinions as to the T/S MOD in his

report Arctic Cat should be able to ask Gilbertson anything about the T/S MOD snowmobile. It

is clear from the record, however, that Arctic Cat is attempting to ask Gilbertson questions about

the T/S MOD snowmobile in relation to the ‘847 patent. (See Id.). It is also clear from the

context of Gilbertson’s expert report that any opinion he offered in his report regarding the T/S

MOD snowmobile related only to the ‘669 patent. Deposing him about topics related to an

opinion he did not offer is outside the scope of related expert discovery and would be improper.

The record demonstrates that BRP’s counsel gave Arctic Cat’s counsel the opportunity to ask

Gilbertson questions related to the T/S MOD in relation to the ‘669 patent, and Arctic Cat chose


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not to do so. (See Id. at 118:1–121:25). Thus, Arctic Cat has waived its opportunity to ask

Gilbertson those questions.

Therefore, to the extent Arctic Cat’s motion seeks to compel Gary Gilbertson to answer

the deposition questions related to the T/S MOD which he was instructed not to answer, the

motion is DENIED.

B. Robert Larson

Arctic Cat asserts that Larson was improperly instructed not to answer deposition

questions about communication he had with two other BRP technical experts—Gary Gilbertson

and Kevin Breen—during a meeting where each of the three experts gave a presentation to

BRP’s legal counsel. (Arctic Cat’s Mem., [Docket No. 594], at 9). Therefore, Arctic Cat argues

Larson should be compelled to answer the questions.

At Larson’s deposition, Arctic Cat’s counsel began asking questions about

communications between persons at a meeting where three experts were presenting to BRP’s

counsel. After some debate between Ms. Daley, counsel for Arctic Cat, and Mr. Goethals,

counsel for BRP about the scope of the questions Arctic Cat’s counsel could ask, the following

exchange took place:

MS. DALEY: . . . you’re saying that the standing instruction that you’ve given to Mr. Larson means that if a BRP attorney was present during a communication, even if the communication is between two experts, you’re not—you’re not letting him answer the question?

MR. GOETHALS: No, that’s not correct.

(Daley Decl., [Docket No 589-3], Ex. 16 at 78:17–78:23). After further unsuccessful discussion,

counsel attempted to clarify the situation, and the following exchange took place:

MS. DALEY: If Mr. Gilbertson is present in the room and there’s—and there’s an exchange between Mr. Gilbertson and Mr. Larson about that presentation, I’m entitled to ask question about it.


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MR. GOETHALS: Okay. That’s fine. I just wanted clarification. And I think the witness said that he had other communications when Mr. Gilbertson was present, but they were directed to the audience of BRP’s attorneys, and that’s where we’re drawing the lines and we’re instructing the witness not to answer.

(Id. at 80:23–81:8). However, after this exchange took place, Arctic Cat’s counsel continued to

ask Larson about communications directed at the attorneys in the meeting and did not ask

questions about his communications with other experts present.

The record shows that BRP’s counsel allowed Arctic Cat’s counsel to ask questions about

any communications between experts, even if that communication took place in the presence of

counsel, and that the only restriction was that Arctic Cat’s counsel could not ask the expert about

communications directed at counsel. (Id.). As Arctic Cat was given the opportunity to ask those

questions about communications between the experts and chose not to, Arctic Cat has waived its

chance to ask those questions. Therefore, to the extent Arctic Cat’s motion seeks to compel

Robert Larson to answer the questions related to communication between experts, the motion is

DENIED

III. ARCTIC’S CAT’S MOTION TO STRIKE BRP’S EXPERT REPORTS OF ROBERT LARSON AND PORTIONS OF OTHER BRP EXPERT REPORTS. [DOCKET NO. 614]

Arctic Cat seeks an order (1) striking portions of Kevin Breen’s Infringement Expert

Report; (2) striking Robert Larson’s Initial Expert Report in its entirety; and (3) striking portions

of Robert Larson’s Rebuttal Expert Report.

Arctic Cat also moved to strike from BRP’s expert reports all infringement analysis

pertaining to Arctic Cat snowmobiles model year 2014–2015 and portions of Gerald Karpik’s

Invalidity Report denying that the T/S Mod snowmobile’s rear legs connect to the tunnel. At the

motions hearing, however, BRP acknowledged that the all infringement analysis pertaining to

Arctic Cat snowmobiles model year 2014–2015 were de facto stricken as they were contingent


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on BRP’s earlier motion to amend its claim chart to add those model years; which motion was

denied. (Motions Hearing, March 3, 2016, Digital Recording at 10:45–10:46). As BRP has

withdrawn those contentions from its expert reports, to the extent Arctic Cat’s motion seeks to

strike that analysis it is DENIED as moot. At the same motions hearing, BRP also affirmatively

acknowledged that Gerald Karpik would not provide an opinion as to whether the T/S MOD

snowmobile’s rear legs connect to the tunnel. (Motions Hearing, March 3, 2016, Digital

Recording at 10:59–11:01). Therefore, to the extent Arctic Cat’s motion seeks to strike that

opinion of Gerald Karpik, the motion is DENIED as moot.


The party moving to strike an expert report or any portion thereof bears the burden of

showing a discovery violation has occurred. Dane Techs. Inc. v. Gatekeeper Sys., Inc., No. 12-

cv-2730 (ADM/JJK), 2015 WL 875373, at *2 (D. Minn. Mar. 2, 2015) (citing Apple, Inc. v.

Samsung Elec. Co., Ltd., No. 12-630, 2014 WL 1322854, at *1 (N.D. Cal. Mar. 28, 2014)).

As a preliminary matter, the Second Amended Pretrial Scheduling Order, in pertinent

part, provides that:

(1) . . . Defendants must serve a prior art statement for each asserted patent, listing all the prior art on which they rely and a complete and detailed explanation of their allegations with respect to:

(i) which claim(s) alleged to be infringed are invalid; (ii) which specific prior art, if any, invalidates each claim; (ii) where in such prior art each element of the allegedly invalid claims may be found; . . .

(Pretrial Scheduling Order, [Docket No. 267, as amended], at 11).

A district court has wide discretion in enforcing the procedural rules in patent cases.

Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-05808 (HSG), 2015 WL 7959890, at *2 (N.D. Cal.

Dec. 4, 2015) (citing SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1292 (Fed. Cir.


16

2005)). However, a “party may not use an expert report to introduce new infringement theories,

new infringing instrumentalities, new invalidity theories, or new prior art references not

disclosed in the parties’ infringement contentions or invalidity contentions.” ASUS Computer

Int’l v. Round Rock Research, LLC, No. 12-cv-02099 JST (NC), 2014 WL 1463609, at *1 (N.D.

Cal. Apr. 11, 2014).

“The scope of contentions and expert reports are not, however, coextensive.” Apple Inc.

v. Samsung Elecs. Co., No. 5:12-cv-0630 (LHK/PSG), 2014 WL 173409, at *1 (N.D. Cal. Jan. 9,

2014). “Infringement contentions need not disclose specific evidence, whereas expert reports

must include a complete statement of the expert’s opinions, the basis and reasons for them, and

any data or other information considered when forming them.” Digital Reg of Texas, LLC v.

Adobe Sys. Inc., No. 12-cv-01971 (CW/KAW), 2014 WL 1653131, at *2 (N.D. Cal. Apr. 24,

2014) (internal quotation marks omitted). “The threshold question in deciding whether to strike

an expert report is whether the expert has permissibly specified the application of a disclosed

theory or impermissibly substituted a new theory altogether.” Id. If a theory was previously

disclosed, the expert’s further explanation of that theory is proper as elaboration on the

previously disclosed theory. See Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-05808 (HSG), 2015

WL 7959890, at *2 (N.D. Cal. Dec. 4, 2015) (citing Apple, 2014 WL 173409, at *2).

The dispositive inquiry in a motion to strike is thus whether the allegedly undisclosed

“theory” is in fact a new theory or new element that was not previously identified in the party’s

contentions, or whether the “theory” is instead the identification of additional evidentiary proof

supporting those already disclosed contentions. Oracle Am., Inc. v. Google Inc., No. 10-cv-

03561 (WHA), 2011 WL 4479305, at *3 (N.D. Cal. Sept. 26, 2011); see also Genentech, Inc. v.

Trustees of University of Pennsylvania, No. 10-cv-2037 (LHK/PSG), 2012 WL 424985, at *2


17

(N.D. Cal. Feb. 9, 2012). If the theory is new, prejudice is “inherent in the assertion of a new

theory after discovery has closed.” Adobe Sys. Inc. v. Wowza Media Sys., No. 11-cv-02243

(JST), 2014 WL 709865, at *15 n.7 (N.D. Cal. Feb. 23, 2014).

B. Facts

Kevin Breen, a technical expert retained by BRP, presented infringement opinions on

whether the Arctic Cat snowmobiles are within the scope of, and therefore infringe, the

following claims of BRP’s asserted patents: ‘847 patent claims 1 and 6–8; ‘848 patent claims 1

and 6–8; and ‘669 patent claims 88 and 92–95. (Daley Decl., [Docket No. 620], Ex. L at ¶ 31).

Robert Larson, a technical expert retained by BRP, presented an Initial Expert Report

analyzing the Arctic Cat snowmobiles accused of infringing the ‘669 patent to determine

whether groupings of representative models exist among the accused snowmobiles models.

(Daley Decl., [Docket No. 617-2], Ex. F at ¶ 13). Robert Larson also presented a Rebuttal Export

Report in which he analyzed and obtained measurements of certain features of certain BRP

snowmobiles containing the REV platform. (Daley Decl., [Docket No. 620], Ex. I at ¶¶ 1–2).

C. Analysis

1. Portions of Kevin Breen’s Infringement Expert Report

Arctic Cat seeks to strike portions of Breen’s opinion regarding Artic Cat’s infringement

of the “steering column movably connected to the frame” limitation in claims 1 of the ‘847 and

‘848 patents. (Daley Decl., [Docket No. 620], Ex. L at ¶¶ 74–80, 149–55, 235–37, 287–89).

Arctic Cat argues that Breen’s opinions contradict BRP Infringement Claim Charts.

While discussing the alleged infringement of ‘847 Patent claim 1, Breen opined that the

“steering column movably connected to the frame other than via a head tube” does not require

the steering column to be connected itself to the frame, and allows the steering column to be


18

connected via intervening elements. (Id. at ¶ 75). In that same section, Breen further opined that

“[s]ince the spars in the accused snowmobiles are connected to the frame, so too is the upper end

of the steering column.” (Id. at ¶ 78). Therefore, Breen opined, “a steering column movably

connected to the frame” reads on and literally describes the MY 2008 Sno Pro 600 exemplar. (Id.

at ¶ 79). Breen provided these same opinions throughout his report related to various exemplar

snowmobiles in relation to the ‘847 and ‘848 patent. (See Id. at ¶¶ 74–80, 149–55, 235–37, 287–

89).

Illustrations related to patent ‘847 showing that the upper end of the steering column is

connected to the frame by the spars are contained in BRP’s Infringement Claim Chart for patent

‘847. (Daley Decl., [Docket No. 617-1], Ex. B at 93, 97–98, 101, 103). Illustrations related to

patent ‘848 showing that the upper end of the steering column is connected to the frame by the

spars are contained in BRP’s Infringement Claim Chart for patent ‘848. (Daley Decl., [Docket

No. 617-1], Ex. C at 185; 189–190; 193–195). The illustrations are not accompanied by text

explicitly stating that the upper end of the steering column is connected to the frame by the spurs,

but spars and connectivity are mentioned in the text.

With respect to patent ‘847, BRP’s Infringement Claim Chart alleged that “[t]he accused

AC snowmobiles do not use a head tube to moveably connect the steering column to the frame,

but instead use a retaining plate and mounting bracket for the steering post. See, e.g., AC142,

Fig. 0743-090.” (Daley Decl., [Docket No. 617], Ex. B at 127). With respect to patent ‘848,

BRP’s Infringement Claim Chart does not appear to explain how the steering column is movably

connected the frame, only that it is connected. (See Daley Decl., [Docket No. 617-1], Ex. C).

Breen’s opinions in his report and the statements in the Infringement Claim Chart both

note that the steering column is movably connected to the frame. Breen opined as to exactly how


19

that connection exists. The statements do not contradict one another. This specification or

clarification is not a new infringement theory. See Apple Inc., 2014 WL 173409, at *1; Digital

Reg of Texas, LLC, 2014 WL 1653131, at *2; Finjan, Inc., 2015 WL 7959890, at *2.2

Therefore, to the extent Arctic Cat’s motion seeks to strike, as a new theory, portions

Breen’s opinion regarding Artic Cat’s infringement of the “steering column movably connected

to the frame” limitation in claims 1 of the ‘847 and ‘848 patents, (Daley Decl., [Docket No. 620],

Ex. L at ¶¶ 74–80, 149–55, 235–37, 287–89), the motion is DENIED.

Arctic Cat also seeks to strike as a new theory Breen’s infringement position for the

limitation “a frame including a tunnel and an engine cradle forward of the tunnel” and the

limitation “engine mounted in the engine cradle” contained in claim 1 of the ‘847 and ‘848

patents because it is not utilizing the exact language of BRP’s initial Infringement contentions in

its claim chart.

In its Infringement Claim Chart for patent ‘847, BRP contends that “[e]ach of the accused

AC snowmobiles has a cradle for receiving and mounting an engine that includes a combination

of structural members, including the forward tunnels extensions, a lower frame including a cross

bar for mounting and supporting the engine from underneath, a rear wall member, and support

member on the side of the engine.” (Daley Decl., [Docket No. 617-1], Ex. B at 65). BRP further

explained in the remainder of its Infringement Claim Chart, “the accused AC snowmobiles have

somewhat different engine cradle components depending on whether the snowmobile has an 800

cc engine, an 1100 cc engine or a 600 cc engine, or a 500 cc engine.” (Id.). BRP makes the same

2 As noted above, the infringement contentions and an expert witness’ later opinions regarding that infringement need not be coextensive. The expert’s opinions will necessarily elaborate on the notice provided by the infringement contentions. Here, the opinions of Breen, elaborate on how the steering column is connected to the frame, as was generally also alleged in the pertinent infringement contention; and to the extent there are some minor inconsistences between the general infringement contention and the specific expert opinion, as in the present case, there may be fertile ground for cross-examination, but there is not an entirely new theory being introduced as to warrant striking the opinion.


20

disclosures in its Infringement Claim Chart for patent ‘848. (Daley Decl., [Docket No. 617-1],

Ex. C at 165).

When referring to the “engine cradle,” Breen noted in his expert opinion that the court’s

recent Claim Construction Order construed “engine cradle” generically to mean “the part of the

frame that supports the engine,” and that in his opinion a person of ordinary skill in the art

“would have understood engine cradle to have that broad meaning[.]”(Daley Decl., [Docket No.

620], Ex. L at ¶ 49). Breen made this assertion in reference to the ‘847 and ‘848 patent. (Id. at ¶¶

45–54, 116–28, 201–14, 256–69). In the illustrations provided in his report, Breen also appears

to label the engine cradle in accordance with the description in his report. (Id. at Appendix 10,

Appendix 11).

It is well established that expert opinions in patent litigation must be based on the court’s

claim construction in order to be considered relevant and reliable and, therefore, admissible.

Ecolab USA Inc. v. Diversity, Inc., No. 12-cv-1984 (SRN/FLN), 2015 WL 2345264, at *5 (D.

Minn. May 14, 2015) (citing Dynetix Design Solutions, Inc. v. Synopsys, Inc., No. 11-cv-5973

(PSG), 2013 WL 4537838, at *4 (N.D. Cal. Aug. 22, 2013) (“Any expert testimony must adhere

to the court’s claim constructions and must not apply alternative claim constructions.”);

Hochstein v. Microsoft Corp., No. 04-cv-73071, 2009 WL 2022815, at *1 (E.D. Mich. July 7,

2009) (granting the plaintiffs’ motion to exclude testimony from the defendant’s expert that

conflicted with the court’s claim construction)). This is because the question of infringement is

resolved by comparing the claim terms—as construed by the court—to the accused device. Apex

Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1370 (Fed. Cir. 2003). This Court in its Claim

Construction Order construed “engine cradle” as “the part of the frame that supports the engine.”

(Order, [Docket No. 552], at 20).


21

As such, in his expert report and opinions Breen was required to construe “engine cradle”

in the manner in which the Court’s Claim Construction Order required without regard for the

manner in which BRP construed it in its initial Infringement Claim Charts. Therefore, to the

extent Arctic Cat’s motion seeks to strike Breen’s infringement position to the extent it differs

somewhat from the initial Infringement contentions related to claim 1 of the ‘847 and ‘848

patents, the motion is DENIED.

2. Larson’s Initial Expert Report

Arctic Cat seeks to strike Larson’s Initial Expert Report in its entirety on the grounds that

he (1) changed the groupings of the snowmobiles and the exemplar snowmobiles that represent

each group and (2) changed the measurement protocol by which he reviewed the Arctic Cat

snowmobiles.

In its Infringement Claim Charts for patent ‘669, BRP identified two groupings of

accused Arctic Cat snowmobiles described in its “Table A” and “Table B.” (Daley Decl.,

[Docket No. 617-1], Ex. A at 4–5). In Table A, BRP listed 78 Arctic Cat snowmobile models as

accused snowmobile models. (Id.). In Table B, BRP listed 16 Arctic Cat snowmobiles as accused

models. (Id. at 5). BRP stated that its Infringement Claim Charts were based on analysis of the

model year 2012 AC ProCross F 800 LXR snowmobile and the model year 2012 AC ProClimb

M 800 Sno Pro 153 snowmobile. (Id. at 6). BRP stated that they reasonably believed that these

two snowmobiles were “representative of most, if not all, the Accused AC snowmobiles listed

above in Tables A and B.” (Id.).

In his Initial Expert Report, Larson divided these same snowmobiles into four sub-groups

based on variations in steering assembly components. (Daley Decl., [Docket No. 617-2], Ex. F at

¶¶ 13–28). All of the snowmobiles listed by Larson in his four sub-groupings are contained in the


22

original Table A or Table B. (Id.). Larson does, however, use different “exemplar” snowmobiles

from within the groups for his “representativeness” analysis for the purpose of obtaining

measurements pertaining to the ‘669 patent infringement analysis.

The “MY 2008 Sno Pro 600 snowmobile” was used as the exemplar for Mr. Larson’s

first group. (Id. at ¶ 17). The “MY 2012 F 1100 LXR snowmobile”3 was used as the exemplar

for Larson’s second grouping. (Id. at ¶ 22). The “MY 2012 M800 Sno Pro 153 snowmobile”4

was used as the exemplar for Larson’s third grouping. (Id. at ¶ 25). The “MY 2012 M800 Sno

Pro 153 snowmobile combined with the CAD image of a vertical steering shaft assembly” was

used as the exemplar for Larson’s fourth grouping. (Id. at ¶ 28).

The exemplar models used by Larson for his first and second grouping were initially

listed as accused Arctic Cat snowmobile models in BRP’s Infringement Claim Charts, but they

were not initially listed as exemplar models. The exemplar snowmobile model Larson’s used in

his third grouping is one of the exemplar models listed by BRP in its Infringement Claim Chart.

The exemplar model Larson used for his fourth grouping was listed as an exemplar model in the

Infringement Claim Charts, but he “combined [it] with the CAD image of a vertical steering

shaft assembly.” (Id. at ¶ 28). This CAD drawing was obtained from Arctic Cat during discovery

of the present case.

Artic Cat argues that these changes in grouping and exemplar models constitute a new

infringement theory.

3 Larson appears to leave off the “ProCross” from the name of this exemplar snowmobile; however, the “ProCross” is the only model year 2012 1100 LXR on the list of snowmobiles for which it is serving as an exemplar model. It appears to by an inadvertent misnomer. 4 Larson appears to leave off the ProClimb from the name of this exemplar snowmobile; however, every snowmobile on the list for which he uses it as an exemplar is a ProClimb model. It appears to by an inadvertent misnomer.


23

Larson’s groups are comprised of only the snowmobiles which BRP disclosed in its

Infringement Claim Chart for patent ‘669. (Compare Daley Decl., [Docket No. 617-1], Ex. A at

4–5 with Daley Decl., [Docket No. 617-2], Ex. F at ¶¶ 13–28). Because the two original sets of

groupings contain the same snowmobiles, the different arrangements of the subgroups in

Larson’s report does not constitute a new infringement theory. The new groups merely further

clarify the original groupings as additional data was obtained through discovery. See Digital Reg

of Texas, LLC, 2014 WL 1653131, at *2; Finjan, Inc., 2015 WL 7959890, at *2 (citing Apple,

2014 WL 173409, at *2).

Likewise, Larson’s use of different exemplar snowmobiles from within the originally

identified infringing models does not constitute a new infringement theory. As noted above, the

exemplar models used by Mr. Larson for his first and second grouping were listed as accused

snowmobile models in BRP’s Infringement Claim Charts. As the exemplar models used for the

first grouping by Larson were previously disclosed as infringing snowmobiles, their use by

Larson cannot constitute a new infringement theory. See Oracle Am., Inc., 2011 WL 4479305, at

*3.

The 2012 F 1100 LXR snowmobile used as the exemplar for Mr. Larson’s second

grouping was only used because the 2012 F 800 LXR snowmobile in BRP’s possession which

was initially listed as the exemplar model in BRP’s Infringement Claim Chart had been

dismantled and was no longer available to Mr. Larson for examination. Arctic Cat does not

refute BRP’s claim that the 2012 F 800 LXR had been dismantled and was no longer available.

BRP asserted in its motion papers and at the motions hearing that the only difference between the

2012 F 800 LXR snowmobile and the 2012 F 1100 LXR snowmobile is the engine size which

has no effect on the ‘669 patent infringement analysis. (BRP Mem. in Opposition, [Docket No.


24

642], at 24). Arctic Cat did not seek to refute this claim. As there is no apparent material and

pertinent difference between the exemplar snowmobile used and the exemplar snowmobile

initially identified, it cannot constitute a new infringement theory. See Oracle Am., Inc., 2011

WL 4479305, at *3.

The exemplar snowmobile model Larson used in his third grouping is one of the

exemplar models listed by BRP in its Infringement Claim Chart. An exemplar model previously

disclosed as an exemplar model cannot constitute a new infringement theory merely because it is

now an exemplar for a smaller subgroup of snowmobiles. See Id.

Finally, the fourth snowmobile Larson used as an exemplar model was the model year

2012 M800 Sno Pro 153 snowmobile combined with a CAD image of a vertical steering shaft

assembly. The model year 2012 M800 Sno Pro 153 snowmobile was disclosed as an exemplar

model in BRP’s Infringement Claim Charts. Arctic Cat fails to demonstrate how the additional

use of snowmobile CAD drawing which it provided for the exemplar snowmobile at issue

constitutes a new infringement theory. See Id.

Therefore, to the extent Arctic Cat’s motion seeks to strike Larson’s Initial Expert Report

in its entirety on the grounds that he changed the groupings of the snowmobiles and the exemplar

snowmobiles that represent each group, the motion is DENIED.

Arctic Cat also seeks to strike Larson’s Initial Expert Report on the grounds that he

changed the measurement protocol for patent ‘669 by which he reviewed the Arctic Cat

snowmobiles when he took measurements without a rider.

Many of the images in BRP’s Infringement Claim Chart for patent ‘669 show a “dummy”

on the coordinating snowmobile. (See e.g., Daley Decl., [Docket No. 617-1], Ex. A at 49–50).


25

However, that same Infringement Claim Chart also contains many images without a “dummy.”

(See e.g., Id. at 48, 51).

In his Initial Report, Larson noted that “in keeping with the condition set forth in the ‘669

Patent, the measurements and analysis reported herein will be of exemplars of the accused Arctic

Cat snowmobiles having fluids, a full fuel tank and being riderless.” (Daley Decl., [Docket No.

617-2], Ex. F at ¶ 36). Larson also noted, however, that he “[f]or the purposes of determining the

effect on the measurements of steering position and steering shaft angle resulting from the

compression of the snowmobile suspension from the weight of the” dummy, he “measured the

steering position and steering shaft angle for the MY 2012 F1100 LXR and MY 2012 M800 Sno

Pro 153 exemplar snowmobiles both riderless and with a [dummy].” (Id. at ¶ 37). Larson then

provided those measurements with and without a dummy. (Id.).

As Larson provided the measurement in accordance with the patent specifications and

provided measurement with and without a “dummy,” his addition of measurements without a

dummy in accordance with the ‘669 patent cannot be said to be a new infringement theory. See

Digital Reg of Texas, LLC, 2014 WL 1653131, at *2.

Therefore, to the extent BRP’s motion seeks to strike Larson’s Initial Expert Report in its

entirety on the grounds that he changed the measurement protocol for the ‘669 patent by which

he reviewed the Arctic Cat snowmobiles, the motion is DENIED.

3. Portions of Larson’s Rebuttal Expert Report

Arctic Cat also seeks to strike certain portions of either Keith Ugone’s Expert Report or

Larson Rebuttal Report because the reports raise the issue of “embodiment” in the rebuttal report

phase. The court notes that it is unclear whether Arctic Cat is seeking to strike portions of

Ugone’s report or portions of Larson’s Rebuttal Report. As Ugone’s Expert Report is not a


26

rebuttal report and he offers no opinion as to embodiment,5 the Court construes Arctic Cat’s

motion as seeking to strike the portions of Larson’s Rebuttal Report in which he provided

measurements demonstrating that the nine REV snowmobiles embodied the ‘669 patent.

In his Initial Expert Report, Larson included measurement to show that the 2003 BRP

REV MXZ practiced and embodied the ‘699 patent claims. (Daley Decl., [Docket No. 617-2],

Ex. F at ¶¶ 79–83). Kevin Breen, in his Initial Expert Report, provided measurement evidence

that the 2008 REV snowmobiles practiced the ‘669 patent. (Daley Decl., [Docket No. 621], Ex.

L at ¶¶ 1182–1186). Given the content of those Initial Expert Reports, it cannot be said that

embodiment opinions were only raised by BRP for the first time in Larson’s Rebuttal Report

because measurements indicating embodiment related to the 2003 BRP REV MXZ and the 2008

REV snowmobiles were cited in the pertinent Initial Expert Reports.

Further, BRP also asserts that Larson presented his Rebuttal Report in response to Arctic

Cat Expert Mark Warner’s Initial Report opining that the asserted claims of the ‘669 patent were

invalid for obviousness. BRP appears to argue that Larson had to submit his Rebuttal Report

showing that the REV snowmobiles embodied the ‘669 patent, so the commercial success of the

REV snowmobiles could be demonstrated, and that the need for demonstrating commercial

success is in order to respond to Warner’s Initial Expert Report.

A patent holder “may rebut a prima facia showing of obviousness with objective indicia

of nonobviousness.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006)

(citing WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999)). These

5 Ugone does mention the embodiment in his damages report, (see Daley Decl., [Docket No. 617-9], Ex. U at ¶ 47)(“A timeline of events related to the Patent-in-Suit, related legal events, BRP’s embodying products, and Arctic Cat’s Accused Products is provided in Exhibit 6.”). However, Ugone specifically noted that he was “not a technical expert, and [he] defer[ed] to the patents themselves and to the opinion of the technical experts as to the scope and coverage of the Patents-in-Suit.” (Id. at ¶ 48). Ugone was retained as an economics and damages expert. (Id. at ¶ 1). Ugone does not offer an opinion as to embodiment; he only assumes embodiment in order to perform his monetary calculations.


27

indicia of nonobviousness are referred to as secondary considerations. One such secondary

consideration is commercial success of the claimed invention. Graham v. John Deere Co. of Kan.

City, 383 U.S. 1, 17–18 (1966); Transocean Offshore Deepwater Drilling, Inc. v. Maersk

Drilling USA, Inc., 669 F.3d 1340, 1347(Fed. Cir. 2012); Ormco Corp., 463 F.3d at 1311. A

claim for commercial success will only be successful if there is a nexus between the claimed

invention and the commercial success, and that nexus can be demonstrated by showing the

claimed invention embodies the patent at issue. See Ormco Corp., 463 F.3d at 1311–12; Brown

& Williamson Tobacco Corp .v Phillip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000).

Therefore, to the extent Arctic Cat’s motion seeks to strike portions of the Larson

Rebuttal Report, the motion is DENIED.

IV. BRP’S MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(b). [DOCKET NO. 591].

BRP moves this Court for an order transferring venue in this matter from the Federal

District of Minnesota’s Sixth Division to the Federal District of Minnesota’s Fourth Division.

(BRP’s Mot. to Transfer Venue [Docket No. 591]).


28 U.S.C. § 1404(b) provides that “[u]pon motion, consent or stipulation of all parties” a

civil suit “may be transferred, in the discretion of the court, from the division in which pending

to any other division in the same district.” Although subject to the discretion of the Court,

transfer motions “should not be freely granted.” In Re Nine Mile Ltd., 692 F.2d 56, 61 (8th Cir.

1982), overruled on other grounds, Missouri Housing Dev. Comm’n v. Brice, 919 F.2d 1306,

1310–11 (8th Cir. 1990); Travel Tags, Inc. v. Performance Printing Corp., 636 F. Supp. 2d 833,

836 (D. Minn. 2007). Courts have considered three factors when deciding a motion to transfer:

(1) the convenience of the parties, (2) the convenience of the witnesses, and (3) the interests of


28

justice. Terra Int’l, Inc. v. Miss. Chem. Corp., 119 F.3d 688, 691 (8th Cir. 1997). “Courts have

not, however, limited a district court’s evaluation of a transfer motion to these enumerated

factors. Instead, courts have recognized that such determination require a case-by-case

evaluation of the particular circumstance at hand and a consideration of all relevant factors.”

(Id.). The Eighth Circuit has “declined to offer an exhaustive list of specific factors to consider in

making the transfer determination, but [has instructed] district courts [to] weigh any case-

specific factors relevant to convenience and fairness to determine whether transfer is warranted.”

In re Apple, Inc., 602 F.3d 909, 912 (8th Cir. 2010) (per curiam) (quotations and citation

omitted); accord Toomey v. Dahl, 63 F. Supp. 3d 982, 993 (D. Minn. 2014); Dial Tech., LLC v.

Bright House Networks, LLC, No. 13-cv-2995 (MJD/TNL), 2014 WL 4163124, at *8 (D. Minn.

Aug. 21, 2014); see Valspar Corp. v. Kronos Worldwide, Inc., 50 F. Supp. 3d 1152, 1155 (D.

Minn. 2014). “There is no precise mathematical formula to be employed, and a district court

enjoys ‘much discretion’ when deciding whether to grant a motion to transfer.” Valspar Corp.,

50 F. Supp. at 1155 (quoting Terra Int’l, Inc., 119 F.3d at 697).

The party seeking the transfer typically bears the burden of proving that a transfer is

warranted. See Terra Int’l, Inc., 119 F.3d at 695. The movant must show that “the balance of

factors strongly favors” transfer. Radisson Hotels Int’l, Inc. v. Westin Hotel Co., 931 F. Supp.

638, 641 (D. Minn. 1996). (internal quotation marks omitted). “The burden is not as heavy,

however, when the movant request a transfer pursuant to 28 U.S.C. § 1404(b): ‘[i]ntradistrict

transfers pursuant to 28 U.S.C. §1404(b) are discretionary transfers subject to the same analysis

under 28 U.S.C. § 1404(a) but are judged by a less rigorous standard.’” Archambault v. United

States, No. 12-cv-5057 (JVL), 2012 WL 6569343, at *2 (D.S.D. Dec. 17, 2012) (quoting

Edwards v. Sanyo Mfg. Corp., No. 3:05-cv-293, 2007 WL 671712, at *1 (E.D. Ark. Feb. 27,


29

2007)) (citing Johnsons v. Burlington-Northern Inc., 480 F. Supp. 259, 260 (W.D. Mo. 1979);

Cottier v. Schaffer, No. 11-cv-5026, 2011 WL 3502491, at 1 (D.S.D. Aug. 10, 2011)). “The

burden may not be met simply by showing that the factors are evenly balanced or weigh only

slightly in favor of transfer.” Datalink Corp v. Perkins Eastman Architects, P.C., 33 F. Supp. 3d

1068, 1077 (D. Minn. 2014) (quotation omitted).

While the rules and caselaw provided little guidance in cases where the plaintiff moves to

transfer, Courts in this District have held plaintiffs to the same standards as defendants in seeking

motions to transfer venue, and they have even suggested that in certain circumstances, plaintiff

should be held to a more heightened standard than defendants. Huggins v. Stryker Corp., 932 F.

Supp. 2d 972, 980–84 (D. Minn. 2013).

B. Facts

BRP originally filed the present action in the North District of Illinois on December 13,

2011. (Declaration of Ruth Rivard in Support of Plaintiff’s Motion to Transfer Venue Pursuant

to 28 U.S.C. § 1404(b) (“Rivard Decl.”), [Docket No. 595], Ex. A). On February 28, 2012,

Arctic Cat moved to transfer venue to the District of Minnesota, but did not explicitly specify the

division into which it wished to be transferred. (Id.). On October 24, 2012, the case was

transferred to the District of Minnesota, and it was assigned to the Sixth Division. (See

Assignment [Docket No. 63]).

C. Analysis

In the present case, neither the factors enumerated in 28 U.S.C. § 1404(a), nor the

particular circumstances of the present case require transfer.


30

1. Convenience of Witnesses

“The convenience of witnesses is an important factor because it determines the relative

ease of access to sources of proof.” Toomey, 63 F. Supp. 3d at 993 (quotation omitted). “In

analyzing this factor, the Court must examine the materiality and importance of the anticipated

witnesses’ testimony and then determine their accessibility and convenience to the forum.”

Klatte v. Buckman, Buckman & Reid, Inc., 995 F. Supp. 2d 951, 955 (D. Minn. 2014). In doing

so, “[t]he focus is on non-party witnesses since it is generally assumed that witnesses within the

control of the party calling them, such as employees, will appear voluntarily in a foreign forum.”

(Id.). “The party seeking transfer must clearly specify the essential witnesses to be called and

must make a general statement of what their testimony will cover.” Oien v. Thompson, 824 F.

Supp. 2d 898, 904 (D. Minn. 2010); accord Toomey, 63 F. Supp. 3d at 993.

While BRP acknowledges that the parties have not exchanged witness list for trial, it

notes that many of the non-party individuals who have been deposed reside outside the State of

Minnesota, and it argues a transfer to the Fourth Division would make travel for those witnesses

more convenient. These assertions fall well short of clearly specifying the essential witnesses and

making a general statement of what issues their testimony will cover.

BRP also argues that a transfer to the Fourth Division would be more convenient for the

retained experts of both parties. Courts have long recognized, however, “that the convenience of

expert witnesses is given little weight in the transfer analysis, as such individuals typically are

well-compensated for their time and, accordingly will travel to testify where needed.” Klatte, 995

F. Supp. 2d at 955. The weight given to the convenience of the expert witnesses in the present

case is even further diminished by the fact that the parties have known the present case was


31

assigned to the Sixth Division since October 24, 2012, and have retained experts with that

knowledge in mind.

Arctic Cat argues that all of its “key” fact witnesses live or work in the Sixth Division

including a significant non-party, non-expert witness, Steve Thorson. Arctic Cat asserted that

Mr. Thorson is the inventor of the T/S MOD III snowmobile, which Arctic Cat argued was

invalidating prior art against BRP’s patents. Arctic Cat specifically noted that the Sixth Division

is the only Division with subpoena power to compel Mr. Thorson’s attendance at trial. Non-party

witnesses that would fall outside the Court’s subpoena power if a transfer is granted are “an

important consideration as a party should generally not be forced to conduct its case by

deposition.” Bae Systems Land & Armaments L.P. v. Ibis Tek, LLC, 124 F. Supp. 3d 878 (D.

Minn. 2015) (quoting Datalink Corp., 33 F. Supp. 3d at 1078); see Toomey, 63 F. Supp. 3d at

993 (noting the court’s preference for “live testimony”). The loss of subpoena power over a

witness that Arctic Cat categorizes as a “key” witness is a substantial factor weighing against

transfer because loss of that subpoena power hinders the relative ease of access to sources of

proof.

Therefore, the Court concludes that the convenience of the witness factor weighs against

transfer.

2. Convenience of the Parties

BRP argues that the Fourth Division is more convenient for all parties reasoning that the

Fourth Division is less costly as a venue for trial, in terms of time and money, for BRP, as well

as, for Arctic Cat whose headquarters are in the Fourth Division. BRP further asserts that it

would have additional travel expense to the Sixth Division, and that both parties would have the

additional expense related to obtaining a work space in the Sixth Division.


32

Arctic Cat responds that many of its party witnesses live or work in the Sixth Division,

and that Arctic Cat’s facilities which house the different accused Arctic Cat snowmobiles and

prior art snowmobiles, which Arctic Cat plans to bring to trial, are located in the Sixth Division.

Arctic Cat argues that it will incur additional difficulties bringing these to the Fourth Division

when they were housed in the Sixth Division in anticipation of the trial taking place in the Sixth

Division.

The present case involves a classic scenario where it is more convenient for each party to

litigate in its own preferred venue rather than the venue the other party prefers. See Datalink

Corp., 33 F. Supp. 3d at 1077–78 (“Just as it would be inconvenient for Perkins Eastman to bring

its records and party witnesses to Minnesota, so it would be equally inconvenient for Datalink to

bring the same to the Southern District of New York.”). While the motion is somewhat unique in

that it seeks an intradistrict transfer, the opposing divisional inconveniences remain.

“In evaluating the convenience of the parties, courts may consider the location of the two

courthouses and the travel expenses that the parties ‘would likely incur . . . for airfare, meals, and

lodging, and losses in productivity from time spent away from work.’” Oien, 824 F. Supp. 2d at

903 (quoting In re Apple, Inc., 602 F.3d at 913). Given that each party, however, anticipates

needing to incur travel expenses and associated costs with regard to witnesses or evidence

regardless of in which division the case is venued, the factor of expenses is essentially neutral. If

it does weigh one direction over the other, it weighs slightly against transfer as Arctic Cat asserts

that many of its party witnesses may be able to testify at trial in the Sixth Division without an

overnight stay, whereas a trial in the Fourth Division would require overnight stays.

BRP’s arguments regarding counsel for all parties needing a work space in the Sixth

Division does not weigh in favor of transfer. “[I]t is axiomatic that convenience to Plaintiff’s


33

counsel is not a factor to be considered in deciding the propriety of transfer.” Amazin’ Raisins

Int’l, Inc. v. Ocean Spray Cranberries, Inc., No. 4-cv-3358 (ADM/AJB), 2004 WL 2595896, at

*3 (D. Minn. Nov. 15, 2004)(quoting Nelson v. Soo Line R.R. Co., 58 F. Supp. 2d 1023, 1027

(D. Minn. 1999)).

Accordingly, the Court finds the factor of party convenience to be neutral.

3. Interest of Justice

The final factor to consider under § 1404(b) is the interest of justice. In assessing the

interest of justice, the Courts considers “(1) judicial economy, (2) the plaintiff’s choice of forum,

(3) the comparative costs to the parties of litigating in each forum, (4) each party’s ability to

enforce a judgment, (5) obstacles to a fair trial, (6) conflict of law issues, and (7) the advantages

of having a local court determine questions of local law.” Terra Int’l, Inc., 119 F.3d at 696.

Given that the present case involves a transfer of divisional assignment and not a transfer of

venue between districts, many of the conventional elements considered in the interest of justice

factor are not relevant.

There is no issue of judicial economy because a divisional change will not likely affect

the trial date nor will it affect the identity of the Judge who presides over the present case.

Likewise, the plaintiff’s choice of forum is not relevant because the law will not differ between

divisions in the same district. The elements of a party’s ability to enforce a judgment, conflicts of

law issues, and the advantages of having a local court determine questions of local law are also

not relevant because regardless of the division in which the present case is heard the same Judge

for the District of Minnesota will continue to preside over all disputes in the present action.

In regard to the comparative cost of the parties litigating in each divisional forum, BRP

argues that the cost to both parties would be higher in the Sixth Division as opposed to the


34

Fourth Division due to additional travel and lodging expenses for its witnesses, expert witnesses

and attorneys. As discussed above, however, the factor of expenses is essentially neutral between

the parties and their respective preferred divisional assignment.

BRP also argues that obstacles to a fair trial exist in the Sixth Division reasoning that

Arctic Cat and Polaris (a competitor of Arctic Cat and BRP) are two of the major employers in

the Sixth Division, and therefore, there is a higher risk in the Sixth Division versus the Fourth

Division that a member of the jury pool will be employed by either Artic Cat or Polaris. BRP

does not, however, address why normal voir dire procedures used to ensure an impartial jury

would be ineffective in the present case. On these factors alone, the interest of justice element is

neutral as to transfer.

The Court notes, however, that the procedural history of this case tilts the interest of

justice factor against transfer. The parties have known the present case was assigned to the Sixth

Division since October 24, 2012, (see Assignment [Docket No. 63]), they have prepared their

respective cases for over three years with the expectation and awareness that the case was

assigned to the Sixth Division, and, as noted above, the parties retained their respective experts

with the knowledge that the present case was assigned to the Sixth Division. BRP waited over

three (3) years and until the case is entering its final phase before bringing the present motion;

this delay, in light of the procedural history of this case, undercuts the credibility of BRP’s

arguments concerning the necessity for intra-divisional transfer of venue at this late date.

Therefore, the Court finds the interest of justice factor weighs against transfer.

In Advanced Logistics Consulting, Inc. v. C. Enyeart LLC, et al., Judge Kyle observed:

“[i]n many cases involving a proposed change of venue, there are factors [that] support each

side. That is true here. There will be some inconvenience to someone no matter where the action


35

is prosecuted.” 2009 WL 1684428, at *7 (D. Minn. June 16, 2009) (quoting LeMond Cycling,

Inc. v. Trek Bicycle Corp., No. 08-cv-1010 (RHK/JSM), 2008 WL 2247084, at *4 (D. Minn.

May 29, 2008)). The same is true in the present case—BRP inevitably will be somewhat

inconvenienced if this case remains venued in the Sixth Division; however, Arctic Cat would

also be inconvenienced by a transfer to the Fourth Division. BRP has not made the sufficiently

strong showing necessary to justify such a transfer.

Therefore, BRP’s Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(b), [Docket

No. 591], is DENIED.

V. BRP’S MOTION TO STRIKE PORTIONS OF DEFENDANTS’ EXPERT REPORTS. [DOCKET NO. 597].

BRP moves this Court for an order striking several portions of Arctic Cat’s various expert

reports, preventing Arctic Cat from providing evidence at trial supporting various invalidity

defenses, and deeming as established certain alleged Arctic Cat admissions. (BRP’s Mot. to

Strike [Docket No. 597]).

In its motion, BRP provides an extensive list of references which it seeks to have stricken

from Arctic Cat’s expert reports. (See Id.). However, it is apparent to the Court that a significant

number of these references are not addressed in BRP’s memorandum of law. To the extent any

of the references are not presented and argued in the memorandum of law, the Court does not

address those references now because doing so would result in the Court arguing on behalf of

BRP. See Henderson ex rel. Henderson, 562 U.S. at 434 (2011) (“Under [our adversarial]

system, courts are generally limited to addressing the claims and arguments advanced by the

parties. Courts do not usually raise claims or arguments on their own.”).

In its memorandum of law BRP seeks an order (1) striking the portions of the Invalidity

Reports of David Karpik and Mark Warner which rely on prior art references, combinations of


36

prior art references, and or invalidity theories which were allegedly not disclosed in Arctic Cat’s

Prior Art Statements as required by the Pretrial Scheduling Order; (2) striking the portions of

David Karpik’s Rebuttal Expert Report which allegedly belatedly introduced invalidity opinions

that certain claims are invalid for indefiniteness when they should have been presented in David

Karpik’s Initial Invalidity Report; and (3) striking the portions of the David Karpik and Mark

Warner Rebuttal Expert Reports that allegedly contradict admission contained in Arctic Cat’s

Non-Infringement Claims Charts and an order deeming those earlier admissions as established.

(BRP’s Mem. [Docket No. 599], at 1–2).

While the introduction to BRP’s memorandum states that “the Warner rebuttal report

introduced opinions of invalidity that should have been presented in his initial report directed to

the validity on which AC has clear and convincing burden of proof,” BRP fails to provide any

argument in the body of its memorandum as to how the introduction of those opinions are invalid

or direct the Court as to where those opinions are in Warner’s Rebuttal Report. (Id. at 3). BRP’s

memorandum contains no section or discussion relating to Warner’s Rebuttal Report. The Court

will not now search through his Rebuttal Report seeking allegedly invalid opinions and crafting

arguments as to those opinions on behalf of BRP. The Court does not advocate for any party. See

Henderson ex rel. Henderson, 562 U.S. at 434.


The Court incorporates here by reference, the Standard of Review from Section III.A.,

supra. In addition thereto, the Court noted that several courts have declined to strike from an

expert report an undisclosed prior art reference if the reference is only being used as background

material, generalized information, and historical foundations. See, e.g., Genentech, Inc., 2012

WL 424985, at *3; Brilliant Instruments, Inc. v. GuideTech, Inc., No. 09-cv-5517 (CW), 2011


37

U.S. Dist. LEXIS 30835, at *5–6 (N. D. Cal. Mar. 15, 2011). These Courts specifically noted

that the previously undisclosed reference could only be used as background material. Genentech,

Inc., 2012 WL 424985, at *3. Further, an expert’s reference to separate previously unidentified

components of a larger, identified structure is permissible, if the larger structure was previously

disclosed. Apple, 2014 WL 173409, at *2–4. Courts have further noted that previously

undisclosed references may be used when those references were used to show the state of

knowledge in the art. See ASUS Computer Int’l, 2014 WL 1463609, at *8.

Related to combinations of prior art contained within expert reports, at least one court in

this District has affirmatively said that every possible combination need not be listed when all

the things included in the combinations could be individually found in the claims charts. Dane

Techs., Inc., 2015 WL 875373, at *2–3. That Court found that it was the claim chart that put the

party on notice of the possible combinations, and the combinations listed in the Prior Art

Statement were merely examples and not intended to be an exhaustive list. Id.

B. Facts

Arctic Cat has two technical experts, David Karpik and Mark Warner. David Karpik

presented an initial Invalidity Expert Report regarding the ‘847 and ‘848 patents. David Karpik

also provided a Rebuttal Report directed at BRP expert Kevin Breen’s Initial Report regarding

the ‘847 and ‘848 patent. Mark Warner provided an Initial Invalidity Report regarding the ‘669

patent.


38

C. Analysis

1. Alleged New Prior Art References in the Karpik Invalidity Report

The portion of the memorandum of BRP that directly addresses David Karpik’s initial

Invalidity Report regarding patents ‘847 and ‘848 contained the following references which were

allegedly not disclosed in Arctic Cat’s Prior Art Statements:

(i)U.S. Patent No. 4,917,207, cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 74, 78-79. (ii) U.S. Patent No. 4,892,165, cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 74, 78-79. (iii) U.S. Patent No. 5,060,745, cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 74, 78-79. (iv) Japanese Patent No. 63-215485A, cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 74, 78-79. (v) Japanese Patent No. 63-215486A, cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 74, 78-79. (vi) Japanese Patent No. 8-91228, cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶ 281. (vii) The 1990-1995 Arctic Cat Prowler snowmobile, cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 125, 138, 154, 195-197, 200-202, 206-208, 251, 295. (viii) The Yamaha Sno Scoot/Sno Sport/Sno Scout snowmobile, cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 74, 79-84, 127. (ix) The BRP Twin Track racer which David Karpik helped design from 1981 through 1984, cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 33. (x) General statements that the claimed “upper column” is in unidentified prior art, contained in Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 142,198, 208. (xi) General statements that triangular or pyramidal shapes were known and/or used in frame design to supply rigidity and torsion resistance, contained in Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 72, 73, and 116.

(BRP Mem., [Docket No. 599], at 10–11). BRP argues that items (i) through (ix) were not

properly disclosed in Arctic Cat’s Prior Art Statements and items (x) and (xi), as general

statements, are attempts by Arctic Cat to circumvent the Pretrial Scheduling Order’s disclosure

requirement. (Id. at 11–12). Arctic Cat argues that each of the attested references in its expert’s

report were discussed as background knowledge or were included in a discussion of the state of

knowledge in the art.


39

A review by the Court of the cited paragraphs in references (i) through (xi) show that all

the references as used were indeed either generalized background information or background

information related to the knowledge a person of ordinary skill in the art would have.

The paragraphs contained in item (ix) are contained under the heading “Snowmobiles in

the 1980s and Early 1990s” which is under the heading “Development in Snowmobile History.”

(Farco Decl., [Docket No. 604-19], Ex. F, at ¶ 33). The paragraphs contained in items (i)–(v); the

paragraphs contained in item (viii), except paragraph 127; and the paragraphs contained in item

(xi), except paragraph 116, are all contained under the heading “The use of triangles and

pyramidal designs” which is under the heading “Background on Technology.” (Farco Decl.,

[Docket No. 604-19], Ex. F, at ¶¶ 72, 73, 74, 78–84). Paragraphs 116 and 127 are under the

heading “Person of Ordinary Skill in the Art” and reference the background information David

Karpik believes a person of ordinary skill in the art would possess.

The paragraphs contained in items (vii) and (x) are contained under the heading

“Analysis of Validity of the ‘847 and ‘848 Patent Claims;” however, the material referenced in

the paragraphs cited by BRP appear on their face to be background information or examples of

background information, not contentions of invalidity. The paragraph contained in item (vi) is

also in David Karpik’s analysis section, but the referenced patent is only offered as an example

related to a prior art reference which shows a rider in a forward position and again not as a

contention of invalidity in itself. (Farco Decl., [Docket No. 604-19], Ex. F at ¶ 281).

As each of the listed items appears to only be referenced in the expert report at issue in an

effort to provide background material, generalized information, or historical foundations, the

Court will not order the items stricken from David Karpik’s report. See Genentech, Inc., 2012

WL 424985, at *3.


40

Therefore, to the extent BRP’s motion seeks to strike the above references from David

Karpik’s Invalidity Report, the motion is DENIED.

2. Alleged New Prior Art References in Warner’s Initial Expert Report

Here, BRP conclusorily asserts without any argument or analysis whatsoever that the

following references in Mark Warner’s Initial Invalidity Report pertaining to the ‘669 patent

claims were never disclosed in any of Arctic Cat’s three Prior Art Statements:

(i) Jetstar Hellstar, cited in Farco Decl. Exh. G - Warner Initial Report at pp. 11, 80, 95, 98. (i) [sic] Snojet snowmobile, cited in Farco Decl. Exh. G - Warner Initial Report at pp. 11, 80. (ii) U.S. Patent No. 5,474,146, cited in Farco Decl. Exh. G - Warner Initial Report at p. 86. (iii) U.S. Patent No. 5,265,692, cited in Farco Decl. Exh. G - Warner Initial Report at p. 92. (iv) U.S. Patent No. 4,892,165, cited in Farco Decl. Exh. G - Warner Initial Report at p. 86. (v) U.S. Patent No. 4,848,503, cited in Farco Decl. Exh. G - Warner Initial Report at p. 89. (vi) 1994 Arctic Cat parts and accessories catalog, cited in Farco Decl. Exh. G - Warner Initial Report at pp. 64-66 to establish adjustable handlebar positions prior to 1998. (vii) “Snowmobile” magazine from January 1994, cited in Farco Decl. Exh. G - Warner Initial Report at pp. 68-69 to establish customized approach to riding was available prior to 1998 to accommodate for individuals of different sizes and shapes. (viii) “Snowmobile History,” P. Pellerin, Vol. I, pages 217, 239. Farco Decl. Exh. G - Warner Initial Report at pp. 68-69 to establish customized approach to riding was available prior to 1998 to accommodate for individuals of different sizes and shapes. (ix) “Snowmobile History,” P. Pellerin, Vol. II, pages 590 and 661. Farco Decl. Exh. G - Warner Initial Report at pp. 68-69 to establish customized approach to riding was available prior to 1998 to accommodate for individuals of different sizes and shapes. (x) Machines from Les Pinz museum, cited in Farco Decl. Exh. G - Warner Initial Report at p. 30, to establish that collections of snowmobiles show that it was common for snowmobiles built in the 1960s and 1970s to have steering shaft over the engine, and that many had steering angles that were steeper than 45 degrees from the vertical. (xi) Machines from Sweeten museum, cited in Farco Decl. Exh. G - Warner Initial Report at p. 30, to establish that collections of snowmobiles show that it


41

was common for snowmobiles built in the 1960s and 1970s to have steering shaft over the engine, and that many had steering angles that were steeper than 45 degrees from the vertical. (xii) Machines from Snowmobile Hall of Fame, cited in Farco Decl. Exh. G - Warner Initial Report at p. 30, to establish that collections of snowmobiles show that it was common for snowmobiles built in the 1960s and 1970s to have steering shaft over the engine, and that many had steering angles that were steeper than 45 degrees from the vertical. (xiii) Arctic Cat Powder Extreme, cited in Farco Decl. Exh. G - Warner Initial Report at pp. 11, 80, 95, 99. (xiv) Ski Doo TNT, cited in Farco Decl. Exh. G - Warner Initial Report at pp. 11, 80, 95. (xv) MXZ 600 snowmobile, cited in Farco Decl. Exh. G - Warner Initial Report at pp. 11, 80, 95, 100. (xvi) “Prior Art Hardware” (AC00074749), cited in Farco Decl. Exh. G - Warner Initial Report at pp. 93-94. (xvii) Arctic Cat Prowler, cited in Farco Decl. Exh. G - Warner Initial Report at pp. 85. (xviii) U.S. Patent No. 5,727,643, cited in Farco Decl. Exh. G - Warner Initial Report at p. 90.

(BRP Mem., [Docket No. 599], at 13–14).

After merely listing the foregoing, BRP’s memorandum goes silent. BRP offers no legal

argument, factual context, explanation, or analysis related to any of these foregoing references.

(See Id.). As noted above, the Court will not undertake this type of investigation and advocacy

for a party. Henderson ex rel. Henderson, 562 U.S. at 434.

As the party moving to strike portions of an expert report, BRP bears the burden of

showing a discovery violation has occurred. Dane Techs. Inc. 2015 WL 875373, at *2. For

instance, as noted above, the context in which each of these references is made could change the

need to strike the reference. See Genentech, Inc., 2012 WL 424985, at *3. By only providing the

Court with a listing of nineteen items and page references devoid of any factual or legal

argument or context, BRP has fallen vastly short of meeting its required burden.

As BRP has failed to meet its burden, to the extent BRP’s motion seen to strike portions

of Mark Warner’s Initial Invalidity Report, the motion is DENIED.


42

3. Alleged New Prior Art Combinations in David Karpik’s Invalidity Report

BRP next argues that David Karpik’s Invalidity Report relies on new prior art

combinations and modification that are not disclosed in any of Arctic Cat’s prior art statements.

Those alleged new combinations and modifications are as follow:

(i) Blade and the T/S Mod, cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 154, 161, 199, 208, 246-247, 251-252, 258, 262, and Farco Decl. Exh. J – Karpik Invalidity Report T/S Mod invalidity claim charts. (ii) T/S Mod and the allegedly admitted prior art “upper column,” cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 154, 203, 205, and Farco Decl. Exh. J – Karpik Invalidity Report T/S Mod invalidity claim charts. (iii) Blade and the allegedly admitted prior art “upper column,” cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶ 205, and Farco Decl. Exh. K - Karpik Invalidity Report Blade invalidity claim charts. (iv) T/S Mod and U.S. Patent No. 4,620,715, cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶ 262 and Farco Decl. Exh. J – Karpik Invalidity Report T/S Mod invalidity claim charts. (v) T/S Mod and knowledge allegedly possessed by persons of ordinary skill in the art, cited in Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 161, 166, 194- 196, 200, 206-208 (vi) Blade and the T/S F-III, cited in Farco Decl. Exh. K - Karpik Invalidity Report Blade invalidity claim charts. (vii) Obviousness of extending the rear tubes of the T/S Mod so that they are attached further back. Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 161, 165-66. (viii) Obviousness of transforming the T/S Mod into a production “snowmobile” for use on snow-covered terrain. Farco Decl. Exh. F - Karpik Invalidity Report at ¶¶ 194-196, 199-200.

(BRP Mem., [Docket No. 599], at 15–16).

BRP does not appear to refute that Arctic Cat previously disclosed the prior art listed

above individually, but instead argues that the exact combinations or modifications of the above

discussed in the expert report at issue were not disclosed. (Id.). BRP implicitly argues that Arctic

Cat was required to disclose in its Prior Art Statement every combination or modification its

experts were going to references in their expert reports. BRP points to no such requirement in the

Pretrial Scheduling Order.


43

The Pretrial Scheduling Order provides that all prior art must be disclosed but does not

require that every combination or modification of that prior art must be disclosed. (Pretrial

Scheduling Order, [Docket No. 267, as amended], at 11). BRP suffered no prejudice by allowing

the combination to be disclosed in the initial expert reports because BRP received the reports

before it deposed the expert, and therefore, BRP knew upon which combination the expert relied

before it deposed said expert.

Therefore, to the extent BRP’s motion seeks to strike portions of Karpik’s Invalidity

Report as improper new combinations or modification of prior art, the motion is DENIED.

4. Alleged New Invalidity Theories in David Karpik’s Invalidity Report

BRP argues that David Karpik raised new or changed invalidity theories regarding the

‘847 and ‘848 patent in his report. At the motions hearing, BPR withdrew its request to strike

David Karpik’s “Gusset” theory from his report, (Motions Hearing, March 3, 2016, Digital

Recording at 10:49), and it also withdrew its request to strike Karpik’s theory on what constitutes

the “apex” in the Blade snowmobile. (Id.) The remainder the alleged new invalidity theories are

discussed below.6

a. Theory that the “Upper Column” of Claims 7–8 of Patent ‘847 and ‘848 is Admitted Prior Art

BRP seeks to strike David Karpik’s references contained in paragraphs 154, 198, 203,

205, and 264 of his Invalidity Reports where he states that the “upper column” was admitted to

be prior art in the ‘847/’848 patents. David Karpik makes these claims in reference to the ‘847 6 BRP’s arguments related to David Karpik’s expert opinions disclosed in his reports challenge the sufficiency of Arctic Cat’s disclosure of prior art in advance of the issuance of Karpik’s initial Invalidity and Rebuttal Reports. Over the course of the present case, Arctic Cat has filed three Prior Art Statements. Each Prior Art Statement has Invalidity Claim Charts attached to it. In its Prior Art Statements, Arctic Cat states that the Prior Art Statement “include[es] the attached invalidity claim charts and exhibits.” (Farco Decl., [Docket No. 604-1], Ex. A at 4). Arctic Cat notes that any references made in the introduction of Prior Art Statement are only in addition to the prior art references disclosed in the Invalidity Claim Charts. (Id. at 6). Each subsequent Prior Art Statement incorporated the previous Prior Art Statements by reference. (Farco Decl., [Docket No. 604-12], Ex. B at 3; Farco Decl., [Docket No. 604-13], Ex. C at 2).


44

and the ‘848 patent. For example, he states that “to the extent the T/S Mod lacked an upper

column, the upper column was admitted prior art in the ‘847 and ‘848 patents (see Figure 4, for

example), and upper columns were prevalent in the prior art (for example, the BLADE

snowmobile discussed below contained an upper column).” (Farco Decl., [Docket No. 604-19],

Ex. F at ¶ 154).

BRP argues that Arctic Cat did not assert in its various Prior Art Statements that the

“upper column” was prior art.

A review of Arctic Cat’s Invalidity Claim Charts shows that Arctic Cat did in fact

disclose “upper column” in its Prior Art Statement in relation to patent ‘847 and patent ‘848. For

example, page 18 of the Invalidity Claim Chart for patent ‘847 reads “8. The snowmobile of

claim 7, wherein the upper column forms the apex with the front ends of the rear legs of the

pyramidal brace assembly and the rear ends of the front legs of the pyramidal brace assembly”—

“[t]he FAST Blade prior art snowmobile discloses the upper column forming an apex with the

front ends of the rear legs of the pyramidal brace assembly and the rear ends of the front legs of

the pyramidal brace assembly.” (Farco Decl., [Docket No. 604-2], Ex. A at 19). The exact same

disclosure is made in the Invalidity Claim Chart for patent ‘848 contained in its Prior Art

Statement. (Farco Decl., [Docket No. 604-2], Ex. A at 54).

In its Second Amended Prior Art Statement,7 for patent ‘847 Arctic Cat provides that

“[i]t would have been obvious to combine the upper column of the T&S F-III snowmobiles, the

‘262 patent, Japanese Patent 63-101187, or the ‘869 Patent with the pyramidal brace assembly of

the T&S MOD-III racing snowmobile to form an apex with the front and rear legs of the T&S

Racing snowmobile.” (Farco Decl., [Docket No. 604-13], Ex. C at 9). The exact same disclosure

7 While Arctic Cat’s second Prior Art Statement is entitled “Supplemental Prior Art Statement,” its third Prior Art Statement is entitled “Second Amended Prior Art Statement.”


45

is made in Arctic Cat’s Invalidity Claim Chart for patent ‘848 contained in its Second Amended

Prior Art Statement. (Farco Decl., [Docket No. 604-13], Ex. C at 20).

A review of the record shows that David Karpik’s Invalidity Report is discussing a theory

previously disclosed by Arctic Cat in its Invalidity Claim Charts incorporated into its Prior Art

Statements. As BRP’s motion is predicated on the incorrect assertion that Arctic Cat had made

no disclosure of an upper column as prior art, to the extent BRP’s motion seeks an order striking

David Karpik’s references to an upper column as prior art, the motion is DENIED.

b. Theory that the ‘164 Patent Discloses “Front Legs,” “Rear Legs,” and “Upper Column”

BRP seeks to strike the portions of David Karpik’s Invalidity Report which identifies the

parts in U.S. Patent No. 4,892,164 that are said to correspond to the “front legs,” “rear legs” and

“upper column” of the ‘847 and ‘848 patent claims. (Farco Decl., [Docket No. 604-19], Ex. F at

¶¶ 76–78, 84). For example, David Karpik states that “[a]s shown in Figures 1 and 2, the frame

members act in the same manner as the front and rear legs of the pyramidal frame of the ‘847

and ’848 Patents.” (Id. at ¶ 77).

Arctic Cat’s Supplemental Prior Art Statement, in a section entitled “Supplemental

Invalidating Prior Art for U.S. Patent Nos. 7,124,847 and 7,124,848,” provides that “U.S. Patent

No. 4,892,164 discloses a triangle frame for a snowmobile, with the left and right legs extending

forwardly and upwardly, and the left and right front legs extending rearwardly and upwardly,

along with a cross-member interconnecting the front legs. See Fig. 1, 2.” (Farco Decl., [Docket

No. 604-12], Ex. B, at 4). Arctic Cat noted in that Supplemental Art Statement that patent ‘164

was “of particular relevance to the claimed ‘pyramidal brace assembly’ of claim 1 of the ‘847

patent and ’84 patent, and all claim limitations associated with the claimed ‘pyramidal brace


46

assembly.’” (Id. at 3–4). BRP does not refute Arctic Cat’s prior art disclosure; it only argues that

the prior art disclosure is not as detailed as David Karpik’s subsequent expert analysis.

“The threshold question in deciding whether to strike an expert report is whether the

expert has permissibly specified the application of a disclosed theory or impermissibly

substituted a new theory altogether.” Digital Reg of Texas, LLC, 2014 WL 1653131, at *2. If a

theory was previously disclosed, the expert’s further explanation of that theory is proper as

elaboration on the previously disclosed theory. See Finjan, Inc., 2015 WL 7959890, at *2.

It is clear from the record that Arctic Cat previously disclosed the theory that the ‘164

patent corresponds to the ‘847 patent and the ‘848 patent claims. David Karpik’s subsequent,

detailed identification of the parts in the ‘164 patent which correspond to the ‘847 patent and the

‘848 patent claims merely elaborated on and clarified Arctic Cat’s previous disclosures.

Therefore, to the extent BRP’s motion seeks to strike the portions of David Karpik’s

Invalidity Report which identifies the parts in U.S. Patent No. 4,892,164 that are said to

correspond to the “front legs,” “rear legs” and “upper column” of the ‘847 and ‘848 patent

claims, the motion is DENIED.

c. Theory that Patent ‘869 Discloses a “Pyramidal Brace Assembly” Having Converging Rear Legs and an “Upper Column”

BRP seeks to strike David Karpik’s assertions in his Invalidity Report that U.S. Patent

No. 4,535,869 discloses a pyramidal brace assembly in which inclined portions 113 of the upper

frame members converge upwardly to an apex. (See Farco Decl., [Docket No. 604-19], Ex. F at

¶¶ 73, 128, 204, 205–06, 208, 234–47). For example, in his report David Karpik notes that “US

Patent No. 4,535,869 . . . disclosed a pyramidal frame for an ATV that was virtually identical to

the pyramidal frame that BRP claims many years later .” (Id. at ¶ 73). He also noted that the ‘614


47

patent “disclose[d] left and right rear legs (113, 114) that extend forwardly and upwardly.” (Id. at

¶ 236).

Arctic Cat’s Prior Art Statement, in part, provides that “[t]he ‘869 Patent discloses a

frame for a 4-whelled vehicle having front legs extending downward from a bent portion (apex)

‘in a diverging relation’ See Figs. 2, 9; col. 3, line 55–col. 3, line 5. The rear legs extend

upwardly at a constant distance from one another, thus, the frame in the ‘869 Patent is a mirror

image of the frame in the ‘431 Patent (which has parallel front legs and diverging rear legs), and

it would be obvious to combine the two structure into a pyramid type frame.” (Farco Decl.,

[Docket No. 601-2], Ex. A at 14).

It seem evident to the Court that the discussion in David Karpik’s Invalidity Report is

again merely providing more detail and clarification to the disclosure in Arctic Cat’s Prior Art

Statement, and it is therefore proper. See Digital Reg of Texas, LLC, 2014 WL 1653131, at *2;

Finjan, Inc., 2015 WL 7959890, at *2.

Accordingly, to the extent BRP’s motion seeks to strike the portions of David Karpik’s

Invalidity Report which asserts that U.S. Patent No. 4,535,869 discloses a pyramidal brace

assembly in which inclined portions 113 of the upper frame members converge upwardly to an

apex, the motion is DENIED.

BRP also seeks to strike paragraphs in David Karpik’s Invalidity Report which contain

opinions based on the assumption that the ‘869 Patent discloses an “upper column.” (See Farco

Decl., [Docket No. 604-19], Ex. F at ¶¶ 73, 128, 204, 205–06, 208, 234–47). David Karpik’s

Invalidity Report under the heading “‘847—Figure 4 (Admitted Prior Art)” noted that the ‘869

patent “disclosed an upper column.” (Id. at ¶ 204).


48

Arctic Cat’s Prior Art Statement in its Invalidity Claim chart for the ‘847 patent,

however, provides that “[t]he ‘869 Patent discloses an upper column extending upwardly. See

Figs. 2, 4, 9 and 1.” (Farco Decl., [Docket No. 604-2], Ex. A at 19). Arctic Cat’s Prior Art

Statement further provides that “[t]he ‘869 Patent discloses an upper column forming an apex

with the front ends of the rear legs of the pyramidal brace assembly and the rear ends of the front

legs of the pyramidal brace assembly.” (Id. at 20).

A review of Arctic Cat’s prior art statement demonstrates that Arctic Cat did properly

disclosed the theory that the ‘869 patent discloses an “upper column.” Therefore, to the extent

BRP’s motion seeks to strike paragraphs in David Karpik’s Invalidity Report which contain

opinions based on the assumption that the ‘869 Patent discloses an “upper column,” the motion is

DENIED.

d. Theory of the Identity of the “Apex” in the T/S MOD Oval Racer

BRP seeks to strike paragraphs 146–148 and 150 of David Karpik’s Invalidity Report,

which state that the “apex” of the T/S Mod oval ice racer is an area near the steering column

bracket, and the corresponding images. (See Farco Decl., [Docket No. 604-19], Ex. F at ¶¶ 146–

48, 150). In his Invalidity Report related to patents ‘847 and ‘848, under the heading “[t]he T/S

Mod Snowmobile Included a Pyramidal Brace Assembly,” David Karpik opined that “[t]he

legs/supports/braces come to a peak or “apex” near and around the point where the steering

column is secured.” (Id. at ¶ 148). Two images which correspondingly follow that paragraph

show the apex labelled as the area around the steering column; with a demonstrative arrow

pointing to but not touching this area of the snowmobile. (Id. at ¶¶ 148–50).

Arctic Cat’s Second Amended Prior Art Statement in the Invalidity Claim Chart for the

‘847 patent disclosed that “[t]he T&S MOD-III racing prior art snowmobile discloses the rear


49

ends of the front legs of the pyramidal brace assembly and the front ends of the rear legs of the

pyramidal brace assembly are interconnected and form an apex not forward of the engine as

those terms are construed by BRP in its claim charts.” (Farco Decl., [Docket No. 604-13], Ex. C

at 8). The Second Amended Prior Art Statement also contains a number of images labelling the

apex; however, the exact labelling of those apexes varies (with some labels touching the

snowmobile and some not) depending on the angle of the image. (See Id.).

BRP thus argues that David Karpik’s Invalidity Report and Arctic Cat’s Second

Amended Prior Art Statement materially depart from one another because the positioning of the

labels on the various images is not exactly the same.

A review of the record demonstrates that the images at issue do not materially depart

from one another. The images do not materially depart from one another because the images in

David Karpik’s expert report and the images in Arctic Cat’s Second Amended Prior Art

Statement all point to the same generally area. While some of the arrows touch the snowmobile

and some do not, the placing of the arrows in all the images may be a necessity of the image

angle or a space constraint from labelling numerous parts in close proximity. Further, David

Karpik’s description of the apex location does not material depart from the apex location

description in Arctic Cat’s Second Amended Prior Art Statements. While the descriptions do not

contain the same wording, each description refers to a similar location on the snowmobile.

Instead, the record shows, that David Karpik’s Invalidity Report enhances and clarifies a

description provided by Arctic Cat in its Second Amended Prior Art Statement, and therefore is

proper. See Digital Reg of Texas, LLC, 2014 WL 1653131, at *2; Finjan, Inc., 2015 WL

7959890, at *2; Oracle Am., Inc., 2011 WL 4479305, at *3; see also Genentech, 2012 WL

424985, at *2.


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As such, to the extent BRP’s motion seeks to strike paragraphs 146–148 and 150 of

David Karpik’s Invalidity Report—which state that the “apex” of the T/S Mod oval ice racer is

an area near the steering column bracket—and the corresponding images, the motion is

DENIED.

5. Invalidity Opinion Raised in David Karpik’s Rebuttal Report BRP seeks to strike: (1) paragraphs 67 and 117 of David Karpik’s Rebuttal Report where

he opines that the claim limitation “left and right skis disposed on the frame” is indefinite

because of the way in which Kevin Breen applied that limitation to the accused products and (2)

paragraphs 68, 70, 119, 121, 123, 167, and 197 where David Karpik opines that the claim

limitation “a straddle seat disposed on the frame above the drive track and rearward of the

engine” is indefinite because of the way in which Kevin Breen applied that limitation to the

accused products. (Farco Decl., [Docket No. 604-19], Ex. H at ¶¶ 67, 117, 68, 70, 119, 121, 123,

167, 197).

Specifically, David Karpik opined in his Rebuttal Report that “the way in which the

Breen Report is applying the term ‘disposed on,’ as it has been construed by the Court to mean

‘arranged to be carried by,’ makes the claims indefinite, because the scope of the claims cannot

be determined with reasonable certainty.” (Id. at ¶ 67). In his initial Invalidity Report, David

Karpik offers various reasons for which, in his opinion, the ‘847 and ‘848 patents are invalid for

claim indefiniteness, but does not include an opinion in reference to the term “dispose on.”

(Farco Decl., [Docket No. 604-19], Ex. F at ¶¶ 264–67).

The Pretrial Scheduling Order provides that “[i]nitial expert reports [of each party] must

be prepared in accordance with Fed. R. Civ. P. 26(a)(2)(B) and address the issues on which that


51

party has the burden of proof.” (Pretrial Scheduling Order, [Docket No. 267], as amended, at ¶

(g)(2)(B)).

A rebuttal or reply expert report is proper if the intent of the report is “solely to contradict

or rebut evidence on the same subject matter identified by the opposing party’s expert report.”

Glass Dimensions, Inc. ex rel. Glass Dimensions, Inc. Profit Sharing Plan & Trust v. State St.

Bank & Trust Co., 290 F.R.D. 11, 16 (D. Mass. 2013) (internal quotation and citation omitted);

see Peals v. Terre Haute Police Dep’t,535 F.3d 621, 630 (7th Cir. 2008); Kleen Products LLC v.

Int’l Paper, 306 F.R.D. 585, 591 (N.D. Ill. 2015); Hans v. Tharaldson, No. 05-cv-115, 2011 WL

6937598, at *10 (D.N.D. Dec. 23, 2011) (noting that “[t]he function of rebuttal evidence is to

explain, repel, counteract or disprove evidence of the adverse party”); Oracle Am. Inc. v. Google

Inc., No. 10-cv-03561 (WHA), 2011 WL 5572835, at *3 (N.D. Cal. Nov. 15, 2011) (“Reply

[expert] reports must be limited to true rebuttal . . . .”). Such rebuttal and reply reports “may cite

new evidence and data so long as the new evidence and data is offered to directly contradict or

rebut the opposing party’s expert.” Glass Dimensions, 290 F.R.D. at 16; see also Hans, 2011 WL

6937598, at *10. On the other hand, expert reports that simply address the same general subject

matter as a previously-submitted initial report, but do not directly contradict or rebut the actual

contents of an opposing report, do not qualify as proper rebuttal or reply reports. Glass

Dimensions, 290 F.R.D. at 16 (finding expert report that was presented as a rebuttal was in fact

an untimely affirmative report, where the report discussed the “same general subject matter” as

the report it was supposed to rebut but did not mention, contradict, or purport to respond to that

report).

David Karpik’s indefiniteness opinions in his Rebuttal Report are clearly responsive to

the contradictory opinion of BRP’s expert Kevin Breen. Each of David Karpik’s indefiniteness


52

opinions in his Rebuttal Report is predicated on the way in which Breen applied a limitation to

the accused products. In contrast, in his own initial expert report, David Karpik offers his own

various opinions as to why the ‘847 and ‘848 patents are invalid for indefiniteness.

Therefore, to the extent BRP’s motion seeks to strike (1) paragraphs 67 and 117 of David

Karpik’s Rebuttal Report where he opines that the claim limitation “left and right skis disposed

on the frame” is indefinite because of the way in which Kevin Breen applied that limitation to

the accused products and (2) paragraphs 68, 70, 119, 121, 123, 167, and 197 where David Karpik

opines that the claim limitation “a straddle seat disposed on the frame above the drive track and

rearward of the engine” is indefinite because of the way in which Kevin Breen applied that

limitation to the accused products, the motion is DENIED.

6. Non-infringement Opinions in David Karpik’s Rebuttal Report that “Contravene” Arctic Cat’s Admissions in its Non-infringement Claim Charts

BRP next argues that certain portions of David Karpik’s Rebuttal Report contradict

admissions Arctic Cat made in its earlier Non-infringement Claims Charts, and therefore, those

opinions of David Karpik should be stricken from his Rebuttal Report. Each of BRP’s

contentions is addressed below.

a. Opinion that the Accused Exemplar Snowmobiles Do Not Have “a Drive Track Disposed Below and Supported by the Tunnel”

In his Rebuttal Report, David Karpik opined that the accused exemplar snowmobiles do

not have a drive track disposed below and support by the tunnel because “the drive track is

supported by the suspension.” (Farco Decl., [Docket No. 604-19], Ex. H, at ¶ 62). In its earlier

Amended Non-Infringement Claim Charts for Patent No. ‘847, Arctic Cat previously admitted

“that the accused structures comprise a drive track supported by the tunnel.” (Farco Decl.,

[Docket No. 604-15], Ex. E, at 6). The statements are in direct contradiction.


53

David Karpik noted the disagreement between himself and Arctic Cat in his Rebuttal

Report and stated that he “reserved the right to provide opinions that the drive track is support by

the suspension, not the tunnel if necessary.” (Farco Decl., [Docket No. 604-19], Ex. H, at ¶ 62).

In its response to BRP’s present motion, Arctic Cat asserted in its motion papers that David

Karpik “only reserved the right to provide opinions” that the accused exemplar snowmobiles do

not have a drive track disposed below and support by the tunnel because the drive track is

supported by the suspension, but he did not actually provide that opinion in his Rebuttal Report.

(Arctic Cat Mem. in Opposition, [Docket No. 633], at 40).

The Court takes as true Arctic Cat’s assertion that David Karpik does not provide such an

opinion in his Rebuttal Expert Report. As David Karpik has not to date proffered such an opinion

and the time for producing expert reports has passed, he is prohibited from offering any such

opinion in the future. (See Pretrial Scheduling Order, [Docket No. 267], as amended). BRP’s

motion is GRANTED consistent with the discussion in this subsection.

b. Opinion that the Accused Exemplar Snowmobiles Do Not Have “an Upper Column”

David Karpik opined in his Rebuttal Report that “the accused Arctic Cat snowmobile

does not have an upper column as the Court has construed that term.” (Farco Decl., [Docket No.

604-19], Ex. H, at ¶ 102). Prior to the Court’s Claim Construction Order, [Docket No. 552],

Arctic Cat “admit[ed] that the accused structures compromise an upper column.” (Farco Decl.,

[Docket No. 604-15], Ex. E, at 9).David Karpik’s opinion here is expressly predicated on the

Court’s Claim Construction Order.

It is well established that expert opinions in patent litigation must be based on the court’s

claim construction in order to be considered relevant and reliable and, therefore, admissible.

Ecolab USA Inc., 2015 WL 2345264, at *5 (citing Dynetix Design Solutions, Inc., 2013 WL


54

4537838, at *4 (“Any expert testimony must adhere to the court’s claim constructions and must

not apply alternative claim constructions.”); Hochstein, 2009 WL 2022815, at *1 (granting the

plaintiffs’ motion to exclude testimony from the defendant’s expert that conflicted with the

court’s claim construction)). This is because the question of infringement is resolved by

comparing the claim terms—as construed by the court—to the accused device. Apex Inc., 325

F.3d at 1370.

As such, David Karpik was required to construe “upper column” in the manner in which

the Court’s Claim Construction Order required and not in the manner in which Arctic Cat

initially construed it in its earlier Non-Infringement Claim Chart. Therefore, to the extent BRP’s

motion seeks to strike David Karpik’s opinion that the accused snowmobile does not have an

upper column as the Court has since construed that term, the motion is DENIED.

c. Opinion that the Accused Exemplar Snowmobiles Do Not Have a “Pyramidal Brace Assembly Connected to the Frame” Because it is Part of the Frame

BRP seeks to strike David Karpik’s opinion in his Rebuttal Report that the accused Arctic

Cat snowmobiles do not have a pyramidal brace assembly connected to the frame. (See Farco

Decl., [Docket No. 604-19], Ex. H at ¶¶ 27, 78, 95, 140(i)). Specifically, David Karpik opined

that “the pyramidal brace assembly in the accused Arctic Cat snowmobiles cannot then be

connected to the frame, since it is the frame.” (Id. at ¶ 78).

In its Amended Non-Infringement Claim Chart for Patent ‘847, related to “a pyramidal

brace assembly connected to the frame”—“Arctic Cat denie[d] that the assembly [was]

connected to the frame, as set forth below. Specifically, the front legs do not extend from the

engine cradle or the tunnel.” (Farco Decl., [Docket No. 604-15], Ex. E, at 7–8). The exact same


55

disclosure is located in Arctic Cat’s Amended Non-Infringement Claim Chart for Patent ‘848.

(Farco Decl., [Docket No. 604-15], Ex. E, at 18).

It is clear from Arctic Cat’s Non-Infringement Claim Charts that it denied the pyramidal

brace assembly was connected to the frame. David Karpik’s opinion of why the pyramidal brace

assembly is not connected to the frame is a further explanation or elaboration of Arctic Cat’s

previously disclosed denial, and therefore, is proper. See Digital Reg of Texas, LLC, 2014 WL

1653131, at *2.

Therefore, to the extent BRP’s motion seeks to strike David Karpik’s opinion in his

Rebuttal Report that the accused Arctic Cat snowmobiles do not have a pyramidal brace

assembly connected to the frame, the motion is DENIED.

VI. BRP’S MOTION TO COMPEL ADDITIONAL DISCOVERY WITHIN THE SCOPE OF ARCTIC CAT’S WAIVER OF PRIVILEGE FOR ADVICE OF COUNSEL DEFENSE (DEPOSITIONS AND IN CAMERA DOCUMENTS REVIEW AND RULING ON ARCTIC CAT’S CLAIM OF PRIVILEGE). [DOCKET NO. 601].

BRP moves the Court (1) for an order compelling Arctic Cat to present Roger Skime for

a second deposition; and (2) for the Court to perform an in camera review of twenty documents.

(BRP’s Mot. to Compel [Docket No. 601]). If, after that in camera review, the Court compels

disclosure of those documents, BRP also seeks an order compelling Arctic Cat to present its

patent counsel, Mr. Jones, and its 30(b)(6) designee, Mr. Halvorson, for additional deposition

testimony upon the production of the requested documents. (Id.).


1. Roger Skime’s Deposition

Federal Rule of Civil Procedure 26(b)(1), as recently amended, provides that “[p]arties

may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or


56

defense and proportional to the needs of the case[.]” Fed. R. Civ. P. 26(b)(1). “The party

resisting production bears the burden of establishing lack of relevancy or undue burden.”

Scheffler v. Molin, No. 11-cv-3279 (JNE/JJK), 2012 WL 3292894, at *6 (D. Minn. Aug. 10,

2012)(quoting St. Paul Reinsurance Co. v. Commercial Fin. Corp., 198 F.R.D. 508, 511 (N.D.

Iowa 2000)).

Federal Rule of Civil Procedure 30(a)(1) provides that “[a] party may, by oral questions,

depose any person, including a party, without leave of court except as provided in Rule

30(a)(2).” Fed. R. Civ. P. 30(a)(1). Federal Rule of Civil Procedure 37(a)(3) provides for various

motions to compel disclosure or compel discovery depending on the nature of the failure by the

other party.

In considering a motion under Federal Rule of Civil Procedure 37, the Court’s duty is to

weigh the discovering party’s asserted need for the information requested, as well as the validity

of the opposing party’s objections, if any. See Cook v. Greyhound Lines, Inc., 847 F. Supp. 725,

737 (D. Minn. 1994); Ulrich v. City of Crosby, 848 F. Supp. 961, 878 (D. Minn. 1994). Any

grounds not stated in a timely objection are waived unless the Court excuses the failure to

respond for good cause. Fed. R. Civ. P. 33(b)(4).

2. In Camera Review

The documents at issue in the present motion are allegedly related to Arctic Cat’s reliance

on advice of legal counsel in defense to claims of willful infringement. Arctic Cat has asserted an

advice of counsel defense to BRP’s willful infringement claim. Once a party announces that it

will rely on advice of counsel in response to an assertion of willful infringement, the attorney-

client privilege is waived with regard to any attorney-client communication relating to the same


57

subject matter, and to a lesser extent the work-product privilege may be waived on relevant

documents. In re EchoStar Communications Corp., 448 F.3d 1294, 1303 (Fed. Cir. 2005).

By asserting the advice of counsel defense to a charge of willful infringement, the

accused infringer and its attorney do not, however, give their opponent unfettered discretion to

rummage through all of their files and pillage all of their litigation strategies. See Thorn EMI

North America, Inc. v. Micron Technology, Inc., 837 F. Supp. 616, 621–23 (D. Del. 1993)

(“[C]ourts generally find a [work-product] waiver only if facts relevant to a particular, narrow

subject matter are at issue and have been disclosed under circumstances where it would be unfair

to deny the other party an opportunity to discover other facts relevant to that subject matter.”).

The overarching goal of waiver in such a case is to prevent a party from using the advice

it received as both a sword, by waiving privilege to favorable advice, and a shield, by asserting

privilege to unfavorable advice. See Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1349

(Fed. Cir. 2005); In re Martin Marietta Corp., 856 F.2d 619, 626 (4th Cir. 1988).

Work product waiver extends only so far as to inform the court of the alleged infringer’s

state of mind. Counsel’s opinion is not important for its legal correctness. It is important to the

inquiry whether it is “thorough enough, as combined with other factors, to instill a belief in the

infringer that a court might reasonably hold the patent is invalid, not infringed, or

unenforceable.” Ortho Pharm. Corp. v. Smith, 959 F.2d 936, 944 (Fed. Cir. 1992). It is what the

alleged infringer knew or believed that is relevant to the court’s analysis of an infringer’s

willfulness. In re EchoStar Communications Corp, 448 F.3d at 1303. The other items counsel

may have prepared but did not communicate to the client are not relevant to that analysis. (Id.).


58

B. Facts

Roger Skime is a long time employee of Arctic Cat who was, from at least 2008 through

2010, Vice President for Snowmobile Research and Development. Mr. Skime was deposed in a

fact discovery deposition in September 2014. At the time of his fact deposition, BRP was not

permitted to ask Mr. Skime privileged questions because Arctic Cat had not yet waived its

privilege.

Troy Halvorson is Arctic Cat’s 30(b)(6) designee regarding the reliance of counsel

defense relevant to claims of willful infringement. That 30(b)(6) deposition took place on

January 26, 2016. (Conneely Decl., [Docket No. 607-4], Ex. G). At his deposition, the 30(b)(6)

designee could not answer “factual” matters related to the “Hetteen prototype” and identified Mr.

Skime as one of the people with factual knowledge of the “Hetteen prototype.” (Id. at 190–198).

In relation to Mr. Jones and the foundation of his legal opinions, Mr. Halvorson, only identified

Mr. Skime as one of the individuals who may have given Mr. Jones information about the

“Hetteen prototype” being displayed at vintage shows, but Mr. Halvorson clarified that he did

not know where Mr. Jones would have gotten that specific information. (Id. at 202:4–202:10).

Mr. Halvorson did note that Mr. Skime was the one who identified the Hetteen prototype

snowmobiles to Mr. Jones. (Id. at 192:11–192:13).

Darren Jones was Arctic Cat’s patent attorney who authored the opinions on which Arctic

Cat now relies for its assertion of advice of counsel defense to willful infringement. (Jones Decl.,

[Docket No. 632], at ¶ 1). In those opinions, Mr. Jones concluded that BRP’s patents ‘847 and

‘848, among others, were invalid. (Jones Decl., [Docket No. 632], at ¶ 1). Mr. Jones provided

Arctic Cat with reports to that effect in June 2008, October 2008, and September 2010. (Jones


59

Decl., [Docket No. 632], at ¶ 1). Mr. Jones was deposed by BRP regarding those opinions on

January 12, 2016. (Id.).

C. Analysis

1. Mr. Skime’s Second Deposition

At the motions hearing, counsel for BRP clarified that it is only seeking to re-depose Mr.

Skime for a half-day deposition regarding Arctic Cat’s waiver of privilege, including Mr.

Skime’s communications with Darren Jones, Arctic Cat’s patent attorney. (Motions Hearing,

March 3, 2016, Digital Recording at 10:35–10:39). BRP acknowledged that it is not seeking to

reconvene a fact deposition with Mr. Skime. (Id.). Therefore, the only issue is whether Arctic

Cat’s 30(b)(6) witness was deficient on matters related to Arctic Cat’s reliance on counsel

defense to willful infringement.

All of the arguments which BRP raises in relation to the 30(b)(6) witnesses deposition are

related to factual matters. In its motion papers, BRP asserts that the “designee identified Mr.

Skime as the person who could answer questions about factual matters regarding the ‘Hetteen

prototype[]” and they even further testified that “he did not ask Mr. Skime any questions about

Skime’s factual knowledge of the ‘Hetteen prototype’ such as when and where it was built.”

(BRP Mem. in Support [Docket No. 603], at 5) (citing Conneely Decl., [Docket No. 607-4], Ex.

G at 190–94; 197–98) (emphasis added). BRP also points out that the 30(b)(6) designee

acknowledged that Roger Skime, not the 30(b)(6) designee, would be the person who knew if

Roger Skime rode the Hetteen prototype in the 1980s. (Conneely Decl., [Docket No. 607-4], Ex.

G at 197–98).

BRP argues that a second deposition is necessary because Mr. Skime is a key player in

Arctic Cat’s advice of counsel defense. However, each of the questions BRP seeks to pose, as


60

noted above, related to an underlying fact in the present case, and are not questions related to

whether Arctic Cat relied on legal advice provided by patent counsel. None of the questions

proposed relate to Arctic Cat’s state of mind at the time it received the opinions of legal counsel

on which it now relies for its defense to willful infringement. BRP does not demonstrate how

Arctic Cat’s 30(b)(6) witness failed to answer any question relevant to Arctic Cat’s reliance on

counsel. See In re EchoStar Communications Corp, 448 F.3d at 1303.

Therefore, to the extent BRP’s motion seeks to initiate a second deposition of Roger

Skime for a half-day regarding Arctic Cat’s waiver of privilege, the motion is DENIED.

2. In Camera Review

At the motions hearing, the Court ordered Arctic Cat to submit the twenty documents at

issue for in camera review. Those document numbers are 281, 283, 287, 289, 290, 293, 294, 298,

334–345.8 The Court has now reviewed those documents.

None of the documents produced for in camera review show any indication whatsoever

of having ever been provided to or reviewed by Arctic Cat. Further, Mr. Jones declared (under

penalty of perjury) that all of the disputed documents came from his personal work file, and that

none of the documents were ever shared with Arctic Cat. (Jones’s Decl. [Docket No. 632], at ¶

3).

The Court finds that the documents presented for in camera review are outside of Arctic

Cat’s waiver of privilege related to its reliance on counsel defense to willful infringement. None

of the documents presented for in camera review appear to have ever been presented to Arctic

Cat, and as such, are not relevant to that defense. See In re EchoStar Communications Corp, 448

F.3d at 1303 (stating that it is what the alleged infringer knew or believed that is relevant to the

8 The documents are referred to by the number in which Artic Cat tabbed each document when the documents were provided to the Court for in camera review.


61

court’s analysis of an infringer’s willfulness and that items not provided to the alleged infringer

are not relevant to that analysis).

Therefore, to the extent BRP’s motion seeks to compel disclosure of document numbers

281, 283, 287, 289, 290, 293, 294, 298, 334–345, the motion is DENIED.

The Court need not reach BRP’s argument as to the scope of Arctic Cat’s waiver, as it

related to the further production of documents, because the Court finds that the documents

presented for in camera review are outside the scope of waiver. Further, the Court need not reach

BRP’s argument related to reconvening the depositions of Mr. Jones or Mr. Halvorson because

BRP expressly condition that request on the Court first compelling production of the documents

reviewed in camera. (See BRP Mem., [Docket No. 603], at 1–2).

Therefore, to the extent BRP’s motion seeks a determination as to the scope of Arctic

Cat’s waiver or seeks to compel the depositions of Mr. Jones or Mr. Halvorson, the motion is

DENIED as moot.

VII. CONCLUSION

Based on the foregoing, and all the files, records, and proceedings herein, the Court

HEREBY ORDERS:

1. That Defendants Arctic Cat’s Motion to Compel BRP Experts to Respond Fully to

Subpoenas, to Answer Questions on Which BRP Experts Were Instructed Not to

Answer, and to Comply with the Second Amended Pretrial Scheduling Order, as

Amended, and Fed. R. Civ. P. 26, [Docket No. 587], is GRANTED in part and

DENIED in part, as set forth above;


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2. That Arctic Cat’s Motion to Strike BRP’s Expert Reports of Robert Larson and

Portions of Other BRP Expert Reports, [Docket No. 614], is GRANTED in part and

DENIED in part, as set forth above;

3. That BRP’s Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(b), [Docket No.

591], is DENIED, as set forth above;

4. That BRP’s Motion to Strike Portions of Defendants’ Expert Reports, [Docket No.

597], is GRANTED in part and DENIED in part, as set forth above; and

5. That BRP’s Motion to Compel Additional Discovery Within the Scope of Arctic

Cat’s Waiver of Privilege for Advice of Counsel Defense (Deposition and In Camera

Document Review and Rulings on Arctic Cat’s Claims of Privilege), [Docket No.

601], is DENIED, as set forth above.

Dated: April 19, 2016 s/Leo I. Brisbois Leo I. Brisbois United States Magistrate Judge
