                             UNITED STATES DISTRICT COURT
                             FOR THE DISTRICT OF COLUMBIA


                                        )
SD3, LLC,                               )
                                        )
              Plaintiff,                )
                                        )
      v.                                )                    Civil No. 08-1242 (RCL)
                                        )
TERESA STANEK REA, (Acting) Director, )
United States Patent & Trademark Office )
                                        )
             Defendant.                 )
                                        )


                                   MEMORANDUM OPINION

        Plaintiff SD3, LLC has sued for a patent on its saw-stopping safety technology. In short,

SD3 claims that it has invented a new way to stop a saw blade almost instantaneously in the

event of a stray finger, or other unsafe condition, entering its path. The government disagrees

and the PTO denied SD3’s patent application on the ground that it was anticipated by a 1974

patent that described a similar piece of technology. Now, SD3 moves for summary judgment

and to exclude defendant’s (“the Director’s”) expert witnesses. SD3 also asks that the Court

exclude the most recent declaration of one of the Director’s experts, Dr. Charles F. Landy, as

untimely filed. For the following reasons, SD3’s motion is denied in all respects. However, the

Court will briefly reopen discovery so that SD3 may again depose Dr. Landy solely on the

subject of his late filed declaration if it so chooses.

I. BACKGROUND

        The factual and procedural background of this case is substantially set out in the Court’s

July 8, 2013 memorandum opinion regarding the Director’s earlier motion for summary
judgment. SD3, LLC v. Dudas, 952 F. Supp. 2d 97 (D.D.C. 2013). A brief summary of that

background relevant to decision on this motion is provided below.

        A. SD3 Patent Application

       SD3 applied for a patent on its saw stopping technology in 2002, defining its invention in

two claims at issue in this case, claim 1 and claim 30. The claims state:

       1. A machine comprising:
                an operative structure adapted to perform a task, where the operative
       structure includes a mechanical cutting tool adapted to move in at least one
       motion; and
                a safety system adapted to detect the occurrence of an unsafe condition
       between a person and the cutting tool, where the safety system includes a
       detection subsystem adapted to detect the unsafe condition, and a reaction
       subsystem adapted to mitigate the unsafe condition;
                where the reaction subsystem includes a brake mechanism adapted to stop
       at least one motion of the cutting tool within 10 milliseconds after detection of the
       unsafe condition.

       30. The machine of claim 1 where the brake mechanism is adapted to stop at least
       one motion of the cutting tool in less than 5 milliseconds after detection of the
       unsafe condition.

Administrative Record (excerpts) at 836, 838, ECF No. 35-3. The Patent Examiner

rejected claim 1 as lacking novelty under 35 U.S.C. § 102(b) and rejected claim 30 as

obvious under 35 U.S.C. § 103(a). Ex parte Gass, No. 2007-4061, 2008 WL 2195265, at

*1 (B.P.A.I. May 27, 2008). The prior art relied upon in so holding was U.S. Patent

3,858,095, which identifies inventors Wolfgang Friemann and Josef Proschka (“the

Friemann patent”). Id.; U.S. Patent 3,858,095 (filed Aug. 1, 1973) (issued Dec. 31,

1974). In the words of the Bureau of Patent Appeals and Interferences, the Friemann

patent, similar to SD3’s claimed invention, “discloses a machine including an operative

structure adapted to perform a task, where the operative structure includes a mechanical

cutting tool 5 adapted to move in at least one motion and a safety system adapted to



                                                2
detect the occurrence of an unsafe condition between a person and the cutting tool, where

the safety system includes a detection subsystem 3 adapted to detect the unsafe

condition.” Ex parte Gass, 2008 WL 2195265, at *2 (internal citations omitted); see ’095

Patent. The patent discloses that its safety system includes a braking mechanism adapted

to stop a cutting tool within 10 milliseconds after detection of the unsafe condition. ’095

Patent, col. 4 ll. 5–6. It also discloses that experiments had shown that by using a

protective circuit arrangement along the lines of the claimed invention, it was possible to

stop a cutting tool in about 5 milliseconds. Id. at col. 2 ll. 15–20.

        The BPAI affirmed the Examiner as to claim 1, finding that SD3 had failed to

establish that the Friemann patent did not enable a person of ordinary skill in the art to

make or carry out the claimed invention without undue experimentation. Ex parte Gass,

2008 WL 2195265, at *4. It also affirmed the Examiner’s finding with respect to claim

30, stating that SD3 failed to provide any substantial evidence to support the argument

that “the claimed limitation”—of stopping a blade in less than 5 milliseconds, rather than

10 milliseconds—was “not a variable that can be optimized by the use of routine skill in

the art and that it is a significant and difficult issue to adapt a brake mechanism to operate

in the recited time scale.” Id. at *6.

        B. Present Litigation and Motion for Summary Judgment

        SD3 filed suit pursuant to 35 U.S.C. § 145, seeking a reversal of the BPAI’s decision and

the award of a patent on claims 1 and 30. Compl., ECF No. 1. The Director later moved for

summary judgment, ECF No. 7, which the Court denied after finding that SD3 had presented

sufficient evidence to raise a genuine issue of material fact regarding its entitlement to a patent.

SD3, LLC, 952 F. Supp. 2d at 97. At that time, the Director had presented no additional evidence



                                                  3
in support of its position, beyond the language of the Friemann patent, the findings of the BPAI

and Examiner, and legal presumptions discussed below. Id. at 103. Now, SD3 moves to exclude

the expert witnesses the Director has since put forward, in addition to moving for summary

judgment. Pl.’s Mem. of Points and Authorities in Supp. of its Mot. to Exclude Expert Ops. and

for Summ. J. 1–2, ECF No. 34-1 (“Pl.’s Mot.”).

II. REQUEST TO EXCLUDE DR. LANDY DECLARATION

       Before the Court can consider SD3’s motion to exclude expert opinions and for summary

judgment, it must determine whether to exclude the Declaration of Dr. Charles F. Landy,

submitted by the Director as an attachment to its response in opposition to SD3’s motion on

August 25, 2014. Dr. Charles F. Landy Decl., ECF No. 35-11. SD3 presents a laundry list of

arguments for its exclusion, namely that it was filed late without justification, it does not correct

prior testimony, its inclusion would be prejudicial to SD3, and that it is misleading and

unhelpful. Pl.’s Reply Mem. to Def.’s Opp’n 13, ECF No. 36.

       A party must make disclosures regarding its expert witnesses in written reports setting

forth, inter alia, each expert’s opinions, the basis for those opinions, and the facts or data

considered in forming them. Fed. R. Civ. P. 26(a)(2)(B). These disclosures must occur “at the

times and in the sequence that the court orders.” Fed. R. Civ. P. 26(a)(2)(D). The most recent

scheduling order in this case states that “[d]iscovery concerning PTO expert’s review of

documents produced by plaintiff on May 23, 2014, and any supplemental report he provides, will

close on June 20, 2014.” Scheduling Order, May 30, 2014, ECF No. 33. All other discovery

closed on May 30, 2014. Id. Therefore, all expert disclosures must have occurred by June 20,

2014 in this case to comply with the Court’s Scheduling Order.




                                                 4
       To the extent required by Rule 26(e), a party must supplement its expert disclosures.

Fed. R. Civ. P. 26(a)(2)(E). Rule 26(e) requires supplementing disclosures when a “party learns

that in some material respect the disclosure or response is incomplete or incorrect, and if the

additional or corrective information has not otherwise been made known to the other parties

during the discovery process or in writing.” Fed. R. Civ. P. 26(e)(1)(A). As applied to expert

witnesses, “the party’s duty to supplement extends both to information included in the report and

to information given during the expert’s deposition.” Fed. R. Civ. P. 26(e)(2). This rule

provides a “limited exception” to the deadlines for expert reports imposed by Rule 26(a)(2).

Richardson v. Korson, 905 F. Supp. 2d 193, 199 (D.D.C. 2012). It “does not grant a license to

supplement a previously filed expert report because a party wants to.” Id. (quoting Estate of

Gaither ex rel. Gaither v. District of Columbia, Civil Action No. 03-1458, 2008 WL 5869876, at

*3 (D.D.C. Oct. 23, 2008)). As interpreted by decisions of this district, Rule 26(e)’s exception is

“narrow” and only permits supplemental reports for the purpose of “correcting inaccuracies or

adding information that was not available at the time of the initial report.” Minebea Co. v. Papst,

231 F.R.D. 3, 6 (D.D.C. 2005).

       Rule 37(c)(1) provides that a failure to disclose according to the requirements of Rule

26(a) or (e) causes the exclusion of the information not disclosed “unless the failure was

substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1). An important consideration in

determining whether a failure to disclose was harmless is whether the late filed report is

submitted well in advance of trial, leaving the opposing party time to adjust its trial preparation

in light of the new information provided regarding the expert’s opinion. Dormu v. District of

Columbia, 795 F. Supp. 2d 7, 28 n.16 (D.D.C. 2011). Another key consideration in determining

the prejudicial impact of the late disclosure is whether discovery can be briefly reopened to allow



                                                5
the opposing party to depose the expert in response to the supplement. Richardson, 905 F. Supp.

2d at 200. Also, in determining the harmlessness of a late filed report, the Court should consider

whether the proposed supplement would offer entirely new opinions or fundamentally change the

opinions already offered or would merely supplement and fill in the gaps of a previous

disclosure. Compare Dormu, 795 F. Supp. 2d at 28 n.16 (concluding that the “supplemental

affidavit sets forth references, not new opinions, and therefore does not blindside defendants

with new information”), with Dag Enters., Inc. v. Exxon Mobil Corp., 226 F.R.D. 95, 109

(D.D.C. 2005) (observing that plaintiffs’ proposed supplemental filing was not a “typical

supplementation” because it sought to entirely “change the substance of their contentions”).

       Dr. Landy states that his declaration was required to respond to calculations presented to

him by SD3’s counsel in his most recent deposition, calculations based on assumptions he was

not previously aware of. Landy Decl. ¶¶ 4, 10. Therefore, the Director contends that Dr.

Landy’s disclosure is permitted under Rule 26(e)(1) and (e)(2).            In response to these

calculations—and questions about them during his deposition—Dr. Landy located a band-saw

which, he argues, demonstrates that a system enabled by the Friemann patent could achieve the

claimed stopping times. Id. ¶ 9.

       This new saw and its substantiation of Dr. Landy’s opinions is precisely the type of

bolstering of expert opinion that Rule 26(e) does not contemplate. See Wannall v. Honeywell

Int’l, Inc., 292 F.R.D. 26, 35 (D.D.C. 2013) (internal citations omitted). Dr. Landy did not

merely correct inaccuracies in his deposition testimony; he found additional evidence that further

substantiated his previously stated expert opinions. Furthermore, Dr. Landy did not state why he

had not previously located a saw of the type referred to in his supplement. The saw located was

manufactured over 20 years ago. Landy Decl. ¶ 9 n.2. Thus, Dr. Landy’s declaration was not



                                                6
justified on the basis of receiving new information not previously available to him. Having

satisfied neither of the “narrow” purposes of Rule 26(e), the Court concludes that Dr. Landy’s

declaration is an untimely filed expert disclosure. See Minebea Co., 231 F.R.D. at 6.

       The prejudice accruing to SD3 as a result of this late filing, however, can be minimized.

First, no date for trial has been set. Therefore, SD3 has ample opportunity to internalize the new

information provided by Dr. Landy into its trial strategy. See Dormu, 795 F. Supp. 2d at 28 n.16

(holding that prejudice may be sufficiently cured when disclosure is made well in advance of

trial). Also, the Court will briefly and narrowly reopen discovery for the purpose of allowing

SD3 to depose Dr. Landy solely regarding this declaration, if it so chooses. See Richardson, 905

F. Supp. 2d at 200 (holding that prejudice may be cured by allowing the opposing party an

opportunity to depose an expert regarding a late filed disclosure). Finally, the opinions offered

by Dr. Landy are not a substantial alteration of his prior opinions that would blindside SD3;

instead, they merely provide further support for his prior contentions. Cf. Dormu, 795 F. Supp.

2d at 28 n.16 (finding reduced prejudice where a late filed disclosure merely provided new

references for an expert’s opinions).

       The Court notes that the parties should not take the Court’s permissiveness in this

instance as a license to make further late filings regarding their expert witnesses. Indeed, the

disruption to a court’s efficient management of a case caused by late filings of this type is a key

consideration in dealing with an issue like this.       Richardson, 905 F. Supp. 2d at 200.

Nonetheless, in this instance, given that any prejudice to SD3 may be sufficiently cured, the

Court will not exclude Dr. Landy’s declaration and will consider it as part of the record on SD3’s

motion.

III. MOTION TO EXCLUDE EXPERT OPINIONS



                                                7
       SD3 moves to exclude the Director’s experts, Dr. Landy and Michael Gililland. It argues

that their testimony is unreliable because based only on the subjective belief that the Friemann

patent accurately and honestly reported that experiments were conducted stopping a saw blade

within the claimed time limits. Pl.’s Mot. 14, 17. SD3 argues on this basis that Dr. Landy and

Gililland should be excluded pursuant to the Court’s role as initial gatekeeper before expert

testimony may reach the trier of fact.

       A. Legal Standard

       Federal Rule of Evidence 702 provides:

       A witness who is qualified as an expert by knowledge, skill, experience, training,
       or education may testify in the form of an opinion or otherwise if: (a) the expert’s
       scientific, technical, or other specialized knowledge will help the trier of fact to
       understand the evidence or to determine a fact in issue; (b) the testimony is based
       on sufficient facts or data; (c) the testimony is the product of reliable principles
       and methods; and (d) the expert has reliably applied the principles and methods to
       the facts of the case.

Fed. R. Evid. 702.

       Pursuant to this rule, trial judges act as “gatekeepers” and must “exclude unreliable

expert testimony.” United States ex rel. Miller v. Bill Harbert Int’l Constr., Inc., 608 F.3d 871,

894 (D.C. Cir. 2010). In the context of scientific expert testimony, the Supreme Court has

outlined four illustrative factors for determining reliability: (1) whether the theory or technique

underlying the testimony has been or can be tested, (2) whether it has been subjected to the peer

review and publication process, (3) its known or potential rate of error, and (4) its “general

acceptance” in the relevant scientific community. Daubert v. Merrell Dow Pharms., Inc., 509

U.S. 579, 593–94 (1993). In the case of technical or non-scientific expert testimony, such as that

presented by Dr. Landy and Gililland, a trial judge should apply the Daubert factors to the extent

relevant to determining a particular expert’s reliability. Kumho Tire Co. v. Carmichael, 526 U.S.



                                                8
137, 152–53 (1999). The trial judge has substantial discretion, however, in determining whether

an expert’s testimony is reliable. Id. A court also has substantial discretion in determining how

best to make that reliability finding in any given case. Id.

       When the judge will serve as factfinder in a trial, the gatekeeping requirement is

substantially relaxed. United States v. H & R Block, Inc., 831 F. Supp. 2d 27, 30 (D.D.C. 2011)

(quoting Whitehouse Hotel Ltd. P’ship v. Comm’r of Internal Revenue, 615 F.3d 321, 330 (5th

Cir. 2010)) (holding that, without the danger of “tainting the trial by exposing a jury to unreliable

evidence,” the importance of the court’s role as gatekeeper is greatly reduced). This is because

“[w]here the gatekeeper and the factfinder are one and the same—that is, the judge—the need to

make such decisions [regarding reliability] prior to hearing the testimony is lessened.” In re

Salem, 465 F.3d 767, 777 (7th Cir. 2006) (citing United States v. Brown, 415 F.3d 1257, 1268–

69 (11th Cir. 2005)); see also United States v. Wood, 741 F.3d 417, 425 (4th Cir. 2013). This is

not to say that expert testimony in this situation need be any less reliable; it simply means that

“the court can hear the evidence and make its reliability determination during, rather than in

advance of trial.” In re Salem, 465 F.3d at 777.

       B. Analysis

       SD3 has argued that the Director’s experts should be excluded on the ground that their

testimony is not reliable. SD3’s sole argument for unreliability is that the expert opinions of Dr.

Landy and Gililland are not based on scientific analysis but only on their acceptance of the

Friemann patent’s statements that experiments were conducted, achieving the stopping times

referred to. Pl.’s Mot. 14, 17. The Court notes that SD3 has not challenged the qualifications of

the Director’s experts and does not reach that issue.




                                                   9
       The Court finds that the Director’s experts should not be excluded. The opinions, as

represented by the submitted expert reports, regard how a person of ordinary skill in the art

would understand what the Friemann patent teaches. See, e.g., Michael L. Gililland Report ¶ 24,

ECF No. 35-4; Dr. Charles F. Landy Addendum Report 2–3, ECF No. 35-8. This is a topic fit

for expert opinion. See Arthrocare Corp. v. Smith & Nephew, Inc., 406 F.3d 1365, 1373–74

(Fed. Cir. 2005) (holding that patent claims were anticipated by an earlier patent and citing

testimony by an expert witness who opined on how a person of ordinary skill in the art would

understand the teachings of that earlier patent); Motorola, Inc. v. Interdigital Tech. Corp., 121

F.3d 1461, 1473 (Fed. Cir. 1997) (holding that a verdict of anticipation was properly supported

by expert testimony regarding how a person of ordinary skill would understand a prior art

reference).

       Furthermore, Dr. Landy and Gililland’s expert opinions are not entirely based on the

subjective belief that experiments were conducted demonstrating that a system enabled by the

Friemann patent was capable of achieving the described stopping times. Instead, their proposed

testimony primarily provides opinions regarding the flaws in SD3’s impossibility argument and

relies on technical literature and their technical experience in so arguing. See, e.g., Landy Decl.

¶ 9 (performing calculations regarding the braking torque required to stop a blade using various

components discovered through research and assumptions derived from knowledge of saw

operation); Gililland Report ¶¶ 18–21, 24–25, 27 (discussing saw components discovered in

research that arguably contradict assumptions made by SD3’s experts and relying on research

and experience to reject opinions offered by SD3’s experts regarding stopping torque required in

a system enabled by the Friemann patent); Dr. Charles F. Landy Report 6–13, ECF No. 35-5

(assessing SD3’s expert reports in light of, for example, his reading of the patents at issue, a



                                                10
technical research paper, and “[his] experience of having developed induction motor design

programs and from having predicted and measured the transient torques produced in numerous

motors during reswitching operations”).

       This type of opinion testimony is considered sufficiently reliable to survive a motion to

exclude. Cf. S.E.C. v. Johnson, 525 F. Supp. 2d 66, 69 n.3 (D.D.C. 2007) (finding admissible

expert testimony regarding industry custom that was “drawn from many years of experience”

and “derived from significant research”); Heller v. District of Columbia, 952 F. Supp. 2d 133,

141 (D.D.C. 2013) (internal citation and quotation marks omitted) (observing a variety of cases

where experience formed the primary basis of expertise and concluding that a method of

“observ[ing] the relevant evidence and appl[ying] their specialized knowledge to the case at

hand” was reliable). Dr. Landy and Gililland appear to have evaluated the Friemann patent, the

reports of SD3’s experts, and their knowledge derived from experience and research to form

their opinions regarding (1) problems in SD3’s expert reports and (2) what is possible in a

system enabled by the Friemann patent in the hands of a person of ordinary skill in the art.

SD3’s arguments that Dr. Landy and Gililland’s criticisms and opinions do not change the

outcome of this case are not reasons to exclude that testimony; such arguments go to the weight

to be accorded that testimony, not its admissibility. See id. at 142–43 (citing cases).

       Additionally, the reduced importance of the gatekeeping function when the court will

serve as factfinder, as is the case here, further shows that the Director has sufficiently

demonstrated the reliability and helpfulness of its experts’ proposed testimony to survive a

motion to exclude. See H & R Block, Inc., 831 F. Supp. 2d at 30. If this suit ultimately reaches

trial, the Court may at that time further assess the reliability of these experts’ testimony and the

proper weight to give it. See In re Salem, 465 F.3d at 777.



                                                 11
IV. MOTION FOR SUMMARY JUDGMENT

       SD3 also moves for summary judgment on the ground that it is physically impossible for

the Friemann patent to enable creation of a system that could stop a blade in the time specified in

SD3’s claims. Pl.’s Mot. 26–29. Therefore, SD3 contends that there is no genuine issue of

material fact as to enablement and SD3 is entitled to judgment as a matter of law. Id.

       A. Legal Standard

               1. Summary judgment

       “The court shall grant summary judgment if the movant shows that there is no genuine

dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.

R. Civ. P. 56(a). A motion for summary judgment is only defeated by a “genuine” dispute as to

a “material” fact; the “mere existence of some alleged factual dispute” is not enough. Anderson

v. Liberty Lobby, Inc., 477 U.S. 242, 247–48 (1986). Material facts are those which could affect

the outcome of a case, as determined by the substantive law underlying the suit. Id. at 248. A

dispute is genuine if the “evidence is such that a reasonable jury could return a verdict for the

nonmoving party.” Id.

       When the moving party would bear the burden of proof at trial, it “must support its

motion with credible evidence—using any of the materials specified in Rule 56(c)—that would

entitle it to a directed verdict if not controverted at trial.” Celotex Corp. v. Catrett, 477 U.S. 317,

331 (1986).     In response, the nonmoving party must present specific facts, beyond mere

allegations or conclusory statements, that would enable a reasonable jury to find in its favor.

Anderson, 477 U.S. at 256.

               2. 35 U.S.C. § 102 – Anticipation




                                                  12
        35 U.S.C. § 102(b) states that a person shall not be entitled to a patent if “the invention

was patented or described in a printed publication in this or a foreign country . . . more than one

year prior to the date of the application for patent in the United States.” 35 U.S.C. § 102(b)

(2006).1 Under this provision, a person is not entitled to a patent if “the same invention,

including each element and limitation of the claims, was known or used by others” before the

date of the patent application. Hoover Grp., Inc. v. Custom Metalcraft, Inc., 66 F.3d 299, 302

(Fed. Cir. 1995). This ground for rejecting a patent application, based on lack of novelty, is

often referred to as “anticipation.” Id. Anticipation is a question of fact. Elan Pharms., Inc. v.

Mayo Found. for Med. Educ. & Research, 346 F.3d 1051, 1054 (Fed. Cir. 2003).

        Prior art must be enabling to serve as an anticipating reference. Id. To enable a claimed

invention, “the prior art reference must teach one of ordinary skill in the art to make or carry out

the claimed invention without undue experimentation.” Id. (quoting Minnesota Mining and Mfg.

Co. v. Chemique, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002)).                       The question of “undue

experimentation” is evaluated according to eight factors:

        (1) the quantity of experimentation;
        (2) the amount of direction or guidance present;
        (3) the presence or absence of working examples;
        (4) the nature of the invention;
        (5) the state of the prior art;
        (6) the relative skill of those in the art;
        (7) the predictability or unpredictability of the art; and
        (8) the breadth of the claims.

Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314–15 (Fed. Cir. 2008) (citing In re

Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). Enablement is a “question of law based upon

underlying factual findings.” Impax Labs., Inc., 545 F.3d at 1315.


1
  Section 102 was amended by the Leahy–Smith America Invents Act, Pub. L. 112–29, Sec. 3, 125 Stat. 284 (Sept.
16, 2011). The amended statute does not apply in this case, however, because the patent application at issue was
filed before the Act’s effective date. Id. at Sec. 35.

                                                       13
       When the prior art is a prior publication, the standard for enablement to be applied

“requires a determination of whether one skilled in the art to which the invention pertains could

take the description of the invention in the printed publication and combine it with his own

knowledge of the particular art and from this combination be put in possession of the invention

on which a patent is sought.” In re Sasse, 629 F.2d 675, 681 (CCPA 1980) (internal citation and

quotation marks omitted). Claimed and unclaimed materials in a patent are presumptively

enabling when the Examiner cites them as prior art anticipating a claimed invention. In re Antor

Media Corp., 689 F.3d 1282, 1287 (Fed. Cir. 2012). This presumption applies at the district

court as well. Id. at 1288. Therefore, the burden of proof is initially on the applicant to rebut the

presumption of enablement. In re Sasse, 629 F.2d at 681. If the applicant puts forward evidence

of non-enablement, the burden shifts to the government to “rebut the . . . contention of non-

enablement.” Id. If the government succeeds on this point, the ultimate burden once again rests

with the applicant. Id.

               3. 35 U.S.C. § 103 – Obviousness

       A patent will not issue “if the differences between the subject matter sought to be

patented and the prior art are such that the subject matter as a whole would have been obvious at

the time the invention was made to a person having ordinary skill in the art to which said subject

matter pertains.” 35 U.S.C. §103(a) (2006). Where a prior art reference is said to disclose the

claim at issue, the prior art will only render the invention obvious, and therefore unpatentable, if

it “enable[s] a person of ordinary skill to make and use the invention.” In re Kumar, 418 F.3d

1361, 1368 (Fed. Cir. 2005).

       B. Analysis




                                                 14
       SD3 argues that the Friemann patent does not enable its claimed invention because it is

physically impossible that a system created using the teachings of the Friemann patent can stop a

saw blade in .10 or .05 milliseconds. Pl.’s Mot. 26–29.

       The Court concludes that the Director has sufficiently presented evidence to raise a

genuine issue of material fact as to enablement and, therefore, anticipation and obviousness.

First, the Director’s experts dispute a number of the assumptions underlying SD3’s argument

regarding the physical impossibility of the disclosed blade stopping times in the Friemann patent.

For example, Gililland concludes that Drs. Turcic and Gass have overstated the amount of torque

required to stop the saw’s motor by relying on a calculation based on a 3 horsepower motor

rather than a less powerful one. Gililland notes the existence of 2 horsepower saw motors, one

of which was presented in Dr. Turcic’s report as an example of the motor in a textile cutting

machine.     Gililland Report ¶¶ 19–20.       Dr. Landy opines that the response time of

electromechanical brakes can be “significantly shortened” by overexciting them, thus stopping

the blade at a faster speed than SD3 contends is possible. Landy Addendum Report 2. The

dispute as to whether SD3’s assumptions are required is material to the question of whether it is

impossible that a system enabled by the Friemann patent could achieve the stopping times

discussed.

       Second, the Director’s experts have presented evidence that the Friemann patent’s

disclosed blade stopping times are not physically impossible. For example, Dr. Landy provided

calculations in his declaration for a blade stopping mechanism, allegedly enabled by the

teachings of the Friemann patent, that could achieve the disclosed stopping times. Landy Decl. ¶

9. Indeed, SD3’s argument that summary judgment is proper largely hinges on the absence of

calculations of this very type.



                                               15
       Finally, the Director and SD3 disagree about whether the Friemann patent teaches a

person of ordinary skill in the art to apply a brake directly to the blade of a saw. Pl.’s Reply 15;

Def.’s Opp’n to Pl.’s Mot. 27–28, ECF No. 35. If the Friemann patent teaches a person of

ordinary skill to apply a brake directly to the saw blade, it would allow for “slippage” in the

system after the blade had already stopped. Id. The calculations of SD3’s experts rely in part on

the premise that Friemann’s patent does not contemplate a braking mechanism that would allow

for slippage. Pl.’s Statement of Material Facts ¶ 3, ECF No. 34-3. Thus, SD3’s physical

impossibility argument relies, in part, on what exactly the Friemann patent teaches regarding a

directly applied brake. The Director’s experts have opined that a braking system could stop one

rotation of a saw blade much faster if slippage were permitted in that system. Landy Addendum

Report 3; Gililland Report ¶¶ 17, 24.

       What a prior art reference teaches a person of ordinary skill in the art is a question of fact.

In re Graves, 69 F.3d 1147, 1151 (Fed. Cir. 1995). The Director has, therefore, raised a fact

question on this point as well, regarding what the Friemann patent teaches. The answer to this

question is material to the outcome of this litigation, in light of (1) the importance of the “no

slippage” premise to SD3’s experts’ opinions and (2) the opinions of the Director’s experts

regarding the stopping speed that is possible when a brake is applied directly to the blade. If the

Friemann patent anticipated SD3’s claims by enabling a person of ordinary skill in the art,

without undue experimentation, to create a device capable of achieving SD3’s claims, it must

lose. 35 U.S.C. §§ 102(b), 103 (2006); Elan Pharms., Inc., 346 F.3d at 1054. Therefore,

summary judgment is inappropriate. SD3’s motion is denied.

V. CONCLUSION




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       SD3’s motion for summary judgment and to exclude the Director’s expert witnesses is

denied. The Director has sufficiently demonstrated that its experts’ opinions are reliable and

helpful to the Court as trier of fact to survive a motion to exclude. SD3 has failed to demonstrate

that there is no genuine issue of material fact regarding its entitlement to a patent.

       The Court will allow the submission of the untimely filed supplemental declaration of Dr.

Landy. In light of the potential prejudice to SD3, however, the Court will briefly reopen

discovery for the limited purpose of allowing SD3 to depose Dr. Landy on this declaration alone,

should it choose to do so.

       Counsel for the parties shall appear before the Court at the date and time specified in the

Court’s Order accompanying this Opinion for a status conference regarding this suit. Counsel

should be prepared to discuss a schedule for trial of this matter.

       Signed by Royce C. Lamberth, United States District Judge, on October 20, 2014.




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