Sparton Corp. v. United States

77 Fed. Cl. 1, 73 Fed. R. Serv. 729, 82 U.S.P.Q. 2d (BNA) 1666, 2007 U.S. Claims LEXIS 119, 2007 WL 1180472
CourtUnited States Court of Federal Claims
DecidedApril 18, 2007
DocketNo. 92-580C
StatusPublished
Cited by17 cases

This text of 77 Fed. Cl. 1 (Sparton Corp. v. United States) is published on Counsel Stack Legal Research, covering United States Court of Federal Claims primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Sparton Corp. v. United States, 77 Fed. Cl. 1, 73 Fed. R. Serv. 729, 82 U.S.P.Q. 2d (BNA) 1666, 2007 U.S. Claims LEXIS 119, 2007 WL 1180472 (uscfc 2007).

Opinion

OPINION

DAMICH, Chief Judge.

Before the Court in this patent infringement case is Defendant’s Motion to Preclude the Testimony of Professor Ralph C. Nash. In the motion, Defendant argues that the expert report provided by Plaintiff on behalf of Professor Nash fails to comply with the Rule 26 of the Rules of the U.S. Court of Federal Claims (“RCFC”), Rule 702 of the Federal Rules of Evidence (“Fed.R.Evid.”), and Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). For the reasons set forth below, Defendant’s motion is GRANTED.

[2]*2I. Background

Sparton Corporation (“Sparton”) filed this complaint, alleging infringement under 28 U.S.C. § 1498 of two patents by the U.S. Department of Navy. Comp. If 1. U.S. Patent No. 3,921,120 is directed to a sonobuoy1 deployment system comprising a float actuated release mechanism and U.S. Patent No. 4,029,233 is directed to a sonobuoy retainer plate. Id. IT 4-5. Plaintiff alleges that sono-buoys procured by the government from several contractors infringe the patents. Id. II7.

Fact discovery closed in this case on January 3, 2006. Before the close of expert discovery on September 19, 2006, Defendant filed a Motion to Preclude Professor Nash from Offering Testimony at Trial. In the motion, Defendant stated that during a conference between the parties, Plaintiff informed Defendant that it may call Professor Ralph C. Nash to testify at trial. Yet, Defendant argued that no expert report by Professor Nash had been served on Defendant as required by RCFC 26(a)(2)(B). The Court granted Defendant’s motion and ordered Plaintiff to produce an expert report by Professor Nash.

In the expert report, dated October 10, 2006, Professor Nash addresses Defendant’s Answer to Plaintiffs Interrogatory No. 1. Plaintiffs Interrogatory No. 1 requests:

For each of U.S. Patent Nos. 3,921,120 and 4,029,233, Sparton requests the United States to identify the basis for the contention that Sparton has granted to the United States a license or lawful right to use or manufacture the subject matter of the claims of the '120 and '233 patents, including but not limited to:
(a) identification of the basis in statute and case law upon which the United states [sic] contends an implied license or right to use was established;
(b) identification of all documents or other evidence which the United States contends establishes the existence of an implied license or right to use/manufacture, and specifically how such evidence establishes the existence of an implied license or right to use/manu-faeture; and
(c) identification of the dates through which the United states [sic] contends an implied license or right to use/manufacture existed.

Def.’s App. at A2. Defendant’s Answer to Interrogatory No. 1 is as follows:

(a) The legal basis for defendant’s defense of a lawful right to use the inventions claimed in the '120 and '233 patents is the Christian Doctrine, see G.L. Christian & Associates v. United, States, 160 Ct.Cl. 1, 312 F.2d 418, aff'd on reh’g, 160 Ct.Cl. 58, 320 F.2d 345 (1963), and Armed Forces Procurement Regulation,2 §§ 7.301, 7.302, 7.302-23 and 9.107 (especially 9.107-1, 9.107-4 and 9.107-5) (1968-1972). With respect to the '120 patent, the Government may also assert a defense of lawful right based solely on the contractual provisions of Contract No. N00019-70-C0133.
(b) The principal documents on which the United States will rely at trial to prove a lawful right to use the inventions claimed in the '120 and '233 patents are:
i. The '0465 contract;
ii. ECP 0465-2;
iii. Plaintiffs briefs in opposition to the motion for summary judgment on the issue [sic] of invalidity;
iv. Plaintiffs briefs on its appeal to the Court of Appeals for the Federal Circuit;
v. The opinion of the 2005 Federal Circuit in this case;
vi. Exhibits 1-53 to Defendant’s Motion for Partial Summary Judgment, filed on October 3,1997;
[3]*3vii. Contract No. N00019-70-C-0133;
viii. The following documents: SPA42084-SPA42088, SPA30734, SPA30710-SPA30712; and
ix. Defendant’s Summary Judgment Exhibit 10.
(c) The entire life of the patents-in-suit, November 18,1975—June 14,1994.

Id. at A2-A3 (brackets in original). Professor Nash’s expert report states in relevant part:

I have analyzed the Christian Doctrine and Armed Forces Procurement Regulations, §§ 7.301, 7.302, 7.302-23 and 9.107 (especially 9.107-1, 9.107-4 and 9.107-5) (1968-1972), in light of the cited documents, and have formed the opinion that they do not provide the defendant with a license or lawful right to use the inventions claimed in the '120 and '233 patents---[T]he Government’s argument appears to be that the Patent Rights clause is a mandatory clause in the supply contract 0465 under which ECP 0465-2 was implemented through mod. 4 thereof. I have been unable to find any support for this argument in the ASPR or evidence that I have reviewed in this case____ [T]he inclusion of the Patent Rights clause in fixed price supply contracts [was] discretionary in January 1969 and therefore not subject to the Christian doctrine. It appears that the Navy properly exercised this discretion not to include the Patent Rights clause in the 0465 fixed-price supply contract for sono-buoys____This appears in accordance with Navy sonobuoy PMA 264 program office long established policy____ Since Mod. 4 was properly issued under the authority of the Changes clause, it can not be construed as a research and development contract. It was clearly a proper modification to a supply contract which the Christian doctrine does not transform into a research and development contract____The parties’ contemporaneous actions during the performance of the subject contract support the conclusion that a Patent Rights clause should not be incorporated therein under the Christian doctrine.

Id. at A4-A5. After Professor Nash’s expert report was served on Defendant, Defendant filed its Motion to Preclude the Testimony of Professor Nash.

II. Analysis

A. Compliance with RCFC 26(a)(2)(B)

Defendant contends that the expert report provided by Professor Nash fails to comply with RCFC 26(a)(2)(B) in that it does not provide the basis and reasons for his opinions.

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77 Fed. Cl. 1, 73 Fed. R. Serv. 729, 82 U.S.P.Q. 2d (BNA) 1666, 2007 U.S. Claims LEXIS 119, 2007 WL 1180472, Counsel Stack Legal Research, https://law.counselstack.com/opinion/sparton-corp-v-united-states-uscfc-2007.