Wilco Marsh Buggies and Draglines Inc v. Weeks Marine, Inc.

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF LOUISIANA

WILCO MARSH BUGGIES AND CIVIL ACTION

DRAGLINES, INC.

NO. 20-3135

VERSUS

SECTION: “J”(1)

WEEKS MARINE, INC.

ORDER & REASONS

Before the Court is a Motion for Reconsideration (Rec. Doc. 162) filed by

Defendant, Weeks Marine, Inc. (“Weeks”) and opposed by Plaintiff, Wilco Marsh

Buggies & Draglines, Inc. (“Wilco”). (Rec. Doc. 172). The Court held oral argument on

this motion and allowed the parties to submit supplemental briefing. (Rec. Docs. 180,

185). Also before the Court is a Motion for Leave to Withdraw and Substitute Expert

Witness (Rec. Doc. 182). Weeks has opposed this motion (Rec. Doc. 186), and Wilco

has filed a reply (Rec. Doc. 190). Having considered the motions and legal

memoranda, the record, and the applicable law, the Court finds that the motion for

reconsideration should be GRANTED and the motion to withdraw and substitute the

expert witness should be DENIED.

FACTS AND PROCEDURAL BACKGROUND

The facts of this case have been recounted by this Court in previous orders.

Therefore, the Court will address only the procedural background relevant to the

instant motion for reconsideration. This Court previously denied Weeks’ motion for

summary judgment. (Rec. Doc. 144). Weeks has now moved for reconsideration on

two main grounds: first, Weeks argues that the asserted claims of Wilco’s ‘801 patent

1

were anticipated by the MudMaster vehicle, and that this Court was incorrect in not

summarily holding that the MudMaster did not qualify as prior art, and second, that

the Court erred in not considering the “Sham Affidavit Doctrine” in finding that the

Harada and Zong machines did not meet the clear and convincing evidence standard

in invalidating the ‘801 patent. Wilco does not contest most of Weeks’ legal arguments

and instead argues first that reconsideration is improper in this instance and second

that the motion for reconsideration should be denied due to the genuine factual issues

that remain regarding the MudMaster, Harada, and Zong machines that Weeks

argues are prior art. After oral argument, the Court allowed both parties to submit

supplemental briefing. Wilco’s supplemental submission is in the form of a

PowerPoint presentation (Rec. Doc. 183) while Weeks submitted both the PowerPoint

they used at oral argument (Rec. Doc. 180) and a supplemental brief in response to

Wilco’s submission. (Rec. Doc. 185).

LEGAL STANDARD

The Federal Rules of Civil Procedure do not expressly allow motions for

reconsideration of an order. Bass v. U.S. Dep’t of Agric., 211 F.3d 959, 962 (5th Cir.

2000). However, the Fifth Circuit has consistently recognized that parties may

challenge a judgment or order under Federal Rules of Civil Procedure 54(b), 59(e), or

60(b). Southern Snow Manufacturing Co, Inc. v. Snowizard Holdings, Inc., 921 F.

Supp. 2d 548, 563-564 (E.D. La. 2013); Lavespere v. Niagara Mach. & Tool Works,

Inc., 910 F.2d 167, 173 (5th Cir. 1990), abrogated on other grounds by Little v. Liquid

Air Corp., 37 F.3d 1069, 1076 (5th Cir. 1994). Rules 59 and 60, however, apply only

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to final judgments. Snowizard, 921 F. Supp. 2d at 563-564. “Therefore, when a party

seeks to revise an order that adjudicates fewer than all the claims among all of the

parties, Federal Rule of Civil Procedure 54(b) controls.” Id. (citing Halena Labs. Corp.

v.Alpha Scientific Corp., 483 F.Supp.2d 538 (E.D. Tex. 2007)). The difference between

a Rule 60(b) and 59(e) motion is based on timing. If the motion is filed within twenty-

eight days of the final judgment, then it falls under Rule 59(e). Id.; Fed. R. Civ. P.

59(e). However, if the motion is filed more than twenty-eight days after the final

judgment, but not more than one year after the entry of judgment, it is governed by

Rule 60(b). Id.; Fed. R. Civ. P. 60(b). Rule 54 sets forth no such time limitations. Fed.

R. Civ. Pro. 54(b); Lightfoot v. Hartford Fire Ins. Co., No. 07-4833, 2012 WL 711842

(E.D. La. Mar. 5, 2012); Snowizard, 921 F. Supp. 2d at 563-564; but see Zapata Gulf

Marine Corp. v. Puerto Rico Marine Shipping Auth., 925 F.2d 812, 815 (5th Cir. 1991)

(discussing a “no just reason for delay” exception).

The general practice of courts in this district has been to evaluate Rule 54(b)

motions to reconsider under the same standards that govern Rule 59(e) motions to

alter or amend a final judgment. Snowizard, 921 F. Supp. 2d at 565 (citing Castrillo

v. American Home Mortgage Servicing, Inc., No. 09-4369, 2010 WL 1424398, at *4

(E.D. La. April 5, 2010)(citations omitted)). Altering or amending a judgment under

Rule 59(e) is an “extraordinary remedy” used “sparingly” by the courts. Templet v.

HydroChem Inc., 367 F.3d 473, 479 (5th Cir. 2004). A motion to alter or amend calls

into question the correctness of a judgment and is permitted only in narrow

situations, “primarily to correct manifest errors of law or fact or to present newly

3

discovered evidence.” Id.; see also Schiller v. Physicians Res. Grp. Inc., 342 F.3d 563,

567 (5th Cir. 2003). Manifest error is defined as “‘[e]vident to the senses, especially

to the sight, obvious to the understanding, evident to the mind, not obscure or hidden,

and is synonymous with open, clear, visible, unmistakable, indubitable, indisputable,

evidence, and self-evidence.’” In Re Energy Partners, Ltd., No. 09-32957-H4-11, 2009

WL 2970393, at *6 (Bankr. S.D. Tex. Sept. 15, 2009) (citations omitted); see also

Pechon v. La. Dep't of Health & Hosp., No. 08-664, 2009 WL 2046766, at *4 (E.D. La.

July 14, 2009) (manifest error is one that “‘is plain and indisputable, and that

amounts to a complete disregard of the controlling law’”) (citations omitted).

Courts have noted that motions to reconsider or amend a final or partial

judgment are “not the proper vehicle for rehashing evidence, legal theories, or

arguments that could have been offered or raised before entry of judgment.” Templet,

367 F.3d at 478-79; Snowizard, 921 F.Supp.2d at 565. Also, such motions should not

be used to “re-litigate prior matters that . . . simply have been resolved to the movant’s

dissatisfaction.” See Voisin v. Tetra Techs., Inc., No. 08-1302, 2010 WL 3943522, at

*2 (E.D. La. Oct. 6, 2010). Thus, to prevail on a motion under Rule 59(e) or 54(b), the

movant must clearly establish at least one of four factors: (1) the motion is necessary

to correct a manifest error of law, (2) the movant presents newly discovered or

previously unavailable evidence, (3) the motion is necessary in order to prevent

manifest injustice, or (4) the motion is justified by an intervening change in

controlling law. Snowizard, 921 F.Supp.2d at 565; Schiller, 342 F.3d at 567; Ross v.

Marshall, 426 F.3d 745, 763 (5th Cir. 2005).

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DISCUSSION

As a preliminary matter, Wilco argues that Weeks has failed to demonstrate

any of the narrow circumstances warranting reconsideration under Rule 54(b). (Rec.

Doc. 172, at 7). Wilco argues that no new evidence has come to light and there has

been no recent change in the law and that Weeks’ motion merely rehashes

previously rejected arguments. Id. at 8. However, Weeks’ motion points out two

legal issues the Court failed to consider which the Court will address in turn.

A. The MudMaster as Prior Art

In denying summary judgment, this Court found that there was a genuine issue

of material fact as to whether the MudMaster constituted prior art. The Court could

not find that any of the documents submitted regarding the MudMaster constituted

a single reference describing the claimed invention. (Rec. Doc. 144, at 16). The

Court considered the MudMaster under the standard for a prior-art patent or

printed publication as outlined in Advanced Display Systems, Inc. v. Kent State

University, 212 F.3d 1272 (Fed. Cir. 2000) and focused on whether the four corners

of any single document fully described each element of the MudMaster. However,

Weeks asserts, and Wilco does not actually dispute that the Court should have

instead considered the MudMaster machine itself as the alleged prior art.

Weeks argues that “the MudMaster™ vehicle is not being asserted as a prior-art

patent or printed publication under 35 U.S.C. § 102. Rather, the prior-art reference

under §102 is the MudMaster™ product that was publicly used and/or on sale in the

United States prior to the ‘801.” (Rec. Doc. 162, at 5) (emphasis in original). Weeks

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further states that “the Court’s Order denying summary judgment erroneously

conflates the prior-art reference (the MudMaster™ vehicle) with the evidence used

to establish the features of the prior-art reference.” Id. at 6.

In support of its arguments, Weeks cites Altera Corporation v. PACT XPP

Technologies, AG, 2015 WL 3830982 at * 3 (N.D. Ca. June 19, 2015) in which the

California court stated that “multiple documents that describe a single prior art

device count as a single prior art reference. In this situation, it is the device that is

the asserted prior art; the documents are merely evidence to describe it.” Weeks

also cites Sonoscan, Inc. v. Sonotek, Inc., 936 F.3d 1261, 1263 (Fed. Cir. 1991) in

which the Federal Circuit held that the features of an alleged piece of prior art may

be established by “any relevant evidence, such as memoranda, drawings,

correspondence, and testimony of witnesses.” The Sonoscan court also stated that

the fact that “the offered product is in fact the claimed invention may be established

by any relevant evidence, such as memoranda, drawings, correspondence, and

testimony of witnesses.” Id. at 1263. In RCA Corp. v. Data Gen. Corp., 887 F.2d

1056, 1060 (Fed. Cir. 1989), the Federal Circuit clarified that there is no

requirement for one single document to disclose every element of the claimed

invention when that invention was being offered for sale. Herein lies the key

distinction: when a device is being offered as prior art, the features of that device

may be proven by multiple pieces of evidence, but when the prior art is a patent or a

prior publication, then each element of the claimed invention must appear within

the four corners of that document. Because the MudMaster itself is being offered as

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prior art, Weeks asserts that each piece of evidence offered may be used to establish

its features. The Court erroneously applied the standard for a patent or prior

publication when evaluating the MudMaster. Therefore, reconsideration is proper

on this subject.

Wilco does not attempt to argue that Weeks’ recital of the law in this case is

incorrect. Instead, Wilco argues that even if the Court evaluates the MudMaster

machine as one prior art reference, there are still genuine issues of fact that would

preclude summary judgment. (Rec. Doc. 172, at 9). Wilco argues that there are

genuine factual issues as to whether “(i) the paper references relied upon by Weeks

Marine are related to the same MudMaster machine sold in 1980, and, (ii) whether

those references disclose every limitation of the ‘801 patent.” Id.

Turning first to the 1980 sale, Wilco argues that Weeks’ evidence is too weak

to support a finding that a sale occurred by clear and convincing evidence. Wilco

states that

Weeks relies exclusively on a purported sales contract and a

DredgeMasters office memorandum. There are no witnesses who can

testify regarding the sale. No person involved in DredgeMasters’

purported sale of the machine will testify at trial. No person involved

in Latina Export’s purported purchase of the machine will testify at

trial. Indeed, at trial, the only evidence the jury will hear regarding

this purported sale is the deposition testimony of a former

DredgeMasters employee, David Binkley, who was NOT employed by

the company in 1980.

Id. at 11. (record citation omitted). Wilco then argues that even if Weeks can prove

that the sale happened, there is not sufficient evidence to prove that the 1980

machine taught each and every limitation of the ‘801 patent. Indeed, as Wilco points

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out, all of the documents Weeks relies on were created years after the purported

sale, between 1983 and 1996. Id.

As in its opposition to summary judgment, Wilco again cites to Sysmex Corp.

v. Beckman Coulter, Inc., 2022 U.S. Dist. LEXIS 113561 (D. Del. 2022) which Wilco

argues contains a very similar fact pattern. In Sysmex, the court granted the

plaintiff (the patent holder’s) partial motion for summary judgment as to the

defendant’s allegation that some of the claims of the patent at issue were invalid

based on a prior sale. The court stated, assuming that the sale could be proven,

“there was insufficient evidence from which a reasonable fact finder could conclude

by clear and convincing evidence that the Advia 2120 that may have been on sale in

the U.S. prior to the critical date actually anticipates or renders obvious the

asserted claims at issue.” Id. at *3. The only evidence related to the features of the

Advia machine was one document printed more than a year after the purported sale

date. Id. Wilco argues that, like in Sysmex, the documents produced by Weeks

related to the 1980 sale are too far removed from the actual sale date to prove by

clear and convincing evidence that the MudMaster is invalidating prior art.

In its reply memorandum to Wilco’s opposition to summary judgment (Rec. Doc.

143), Weeks addressed Wilco’s reliance on Sysmex. Weeks argues that Sysmex is

different from the case at hand because

In Sysmex, the issue was whether the defendant could rely upon a 2008

publication describing plaintiff’s second, non-prior art device to establish

the features of the patent owner’s first, prior art device. The court held

that the 2008 publication alone was insufficient to establish the first

device’s features. The court noted that the record was insufficient to

conclude that the second device was materially identical to the first

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device. Id. at *4. Unlike in Sysmex, Mr. David Binkley, the Vice President

of DMI, testified as to the MudMaster’s design, capabilities, and

correlation between the MudMaster descriptions in the post-1980 DMI

documents, such as the May 1993 Assembly Instructions, to the

MudMaster units sold in 1980. (Dkt. 110-12, Binkley Dep. at 42:3-16;

70:23-71:4). Accordingly, no genuine issue of material fact exists that the

MudMaster also qualifies as prior art due to the 1980 sale and the 1981

ConExpo public disclosure, and that the May 1993 Assembly Instructions

are relevant for establishing the features of the MudMaster unit sold and

publicly displayed in 1980/1981.

(Rec. Doc. 143, at 4). As laid out by Weeks, Sysmex dealt with a different issue

than the issue concerning reliability of the documents relating to the 1980 sale.

Sysmex addressed whether a publication describing a second device could be used to

establish the features of the earlier purported prior art. The documentation in this

case does not purport to be for a separate device as in Sysmex. Therefore, Sysmex is

not dispositive.

Wilco is correct that the documentation Weeks has submitted regarding the 1980

sale was not created contemporaneously. However, Wilco does not actually present

any argument to suggest the documentation is unreliable besides the fact that it

was created after the sale and the fact that Mr. David Binkley, the current Vice

President of DredgeMasters International, Inc. (“DMI”) which manufactured the

MudMaster, did not work for the company in 1980. In denying summary judgment

and Wilco’s Motion to Strike and Exclude Evidence (Rec. Doc. 126), the Court

already found that Mr. Binkley had personal knowledge of the record keeping

system at DMI and could testify regarding the authenticity of the documents

relating to the 1980 sale. (Rec. Doc. 144, at 11-13). Wilco does not raise any

legitimate reason to doubt the applicability of the submitted evidence to the 1980

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sale. The fact that Mr. Binkley can testify as to the record keeping practices of DMI

and the fact that the evidence submitted by Weeks contains sufficient indicia of

trustworthiness leaves this Court no legitimate reason to doubt that the evidence

submitted applies to the 1980 sale.

Now, the Court can turn to the real factual issue surrounding the MudMaster:

whether it is prior art that fully anticipates Wilco’s ‘801 patent. Tellingly, Wilco

does not actually attempt to argue in its opposition to Weeks’ motion to reconsider

that there are differences between the MudMaster and the ‘801 Patent. Instead,

Wilco again focuses on its arguments concerning the reliability of the evidence

relating to the 1980 sale. Even in its opposition to Weeks’ initial motion for

summary judgment, Wilco did not seriously attempt to argue that the MudMaster

was different from the ‘801 Patent in any way. Instead, Wilco focused on arguing

that the documentation relied on by Weeks was inadmissible, an argument which

the Court rejected, and on arguing that the documents produced by Weeks could not

constitute a singular reference, an argument which this Court now acknowledges to

be legally unsound. By contrast, Weeks spends pages of its motion for summary

judgment outlining each way in which the MudMaster vehicle anticipates each

claim of the ’801 patent.

Weeks must show by clear and convincing evidence that each claim of the ‘801

patent can be found in the MudMaster. Therefore, the Court will now evaluate the

claims in turn. The first claim involves: “a vehicle comprising: a chassis; at least two

pontoons supported by said chassis, wherein said pontoons provide sufficient

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buoyancy such that the vehicle can float on water; a track system disposed on said

pontoons and adapted to provide propulsion to the vehicle when moving on land or

in water; a plurality of spuds connected to said chassis, wherein said spuds have a

first position wherein said spuds extend below the bottom of said pontoons and a

second position wherein said spuds do not extend below the bottom of said

pontoons.” (Rec. Doc. 110, at 15); (Rec. Doc. 183, at 18). Weeks argues that the

MudMaster has a chassis made of two 16-foot-long connector pipes, two pontoons

which are supported by the chassis, a tract system which can propel the MudMaster

across soft terrain or while floating, and two spuds which can be deployed below the

pontoons to anchor the vehicle. (Rec. Doc. 110, at 15-16).

Wilco disputes that the MudMaster discloses a chassis. In their supplemental

PowerPoint, Wilco argues that there are no drawings showing connector pipes and

no drawings identifying a trunnion support frame. (Rec. Doc. 183, at 22). In

response, Weeks argues that there is no need to provide a drawing showing a

connector pipe or trunnion frame. Weeks states that “the MudMaster Assembly

Instructions provided ample disclosure for their expert, Dr. Hudson to conclude that

a POSITA would understand the MudMaster to possess a chassis.” (Rec. Doc. 185,

at 11). This Court construed a chassis to mean “the supporting frame of a vehicle,

exclusive of the body or housing” (Rec. Doc. 54). Wilco doesn’t cite any support for

the proposition that drawings are necessary and that the Court as well as Weeks’

expert cannot rely on the Assembly Instructions to deduce that the MudMaster had

a chassis. Wilco’s supplemental PowerPoint is the first filing in which Wilco

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attempts to actually assert that the MudMaster does not anticipate the ‘801 Patent.

Wilco’s four slides dedicated to Claim 1 are not enough to convince this Court that

there is a genuine issue of material fact relating to the chassis of the MudMaster.

The same can be said for Wilco’s arguments regarding Claim 12. Claim 12’s

limitations are: “a vehicle comprising a plurality of spud assemblies attached to said

amphibious chassis; and equipment mounted to said amphibious chassis…wherein

said plurality of spud assemblies . . . are adapted to laterally support the vehicle in

the second operating mode.” (Rec. Doc. 183, at 26). Wilco argues that the

MudMaster does not disclose spuds that provide lateral support. Id. Weeks asserts

that “the presence of two spuds spaced apart laterally on the MudMaster inherently

provides side-to-side restraint of the MudMaster when floating as a matter of

physics.” (Rec. Doc. 110, at 26). Weeks also points to the testimony of David Binkley

who testified that when both spuds were deployed during normal dredging

operations, they would restrain the MudMaster from side-to-side movement. Id.

Wilco has provided the Court with one slide regarding Claim 12 which does not

contain any argument and merely contains small screenshots of the testimony of

Mr. Binkley and Weeks’ expert. (Rec. Doc. 183, at 26). Weeks has a high burden to

meet in showing that prior art invalidates Wilco’s patent. Weeks must show by clear

and convincing evidence that the patent lacks novelty and is therefore invalid.

Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375 (Fed. Cir. 1986).

However, Wilco has done nothing to refute Weeks’ analysis that the MudMaster

teaches the claims of the ‘801 patent. Wilco could have addressed Weeks’ arguments

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regarding the MudMaster in their opposition to Weeks’ original motion for

summary judgment, in their opposition to Weeks’ motion to reconsider, at oral

argument, or in the supplemental briefing opportunity provided by this Court.

Rather, Wilco chose to focus on arguments concerning the reliability and

admissibility of Weeks’ evidence. A conclusory PowerPoint without citations to the

record and without any analysis is not enough to defeat summary judgment. Having

now decided that Weeks has submitted sufficient admissible documentation

regarding the MudMaster which was the subject of the 1980 sale, and lacking any

legitimate arguments on Wilco’s part as to why the MudMaster does not constitute

anticipating prior art, the Court finds that the ‘801 Patent lacks novelty and is

therefore invalid.

B. The Harada and the Zong

Additionally, even if the Court had not found that the MudMaster anticipates

the ‘801 Patent, Weeks would also be entitled to summary judgment as to the

Harada and the Zong because of the Sham Affidavit Doctrine. Weeks also argues

that the Court erred in not considering the Sham Affidavit Doctrine in utilizing the

testimony of William Bennett. Wilco uses Mr. Bennett’s testimony in addressing the

MudMaster as well as the Harada and the Zong, two other instances of purported

prior art. Weeks argues that Wilco relied solely on Mr. Bennett’s sworn declaration

in attempting “to create a genuine issue of material fact with respect to anticipation

of the asserted claims by both Harada and Zong.” (Rec. Doc. 162, at 17). Weeks

argues that Mr. Bennett’s declaration contradicts his deposition testimony, and

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therefore should not be used in deciding summary judgment. Id. See S.W.S. Erectors

v. Infax, Inc., 72 F.3d 489, 495-496 (5th Cir. 1996). Additionally, due to health

issues, Mr. Bennett claims he is no longer able to testify at trial and has resigned

from the case. Wilco has moved to substitute Mr. Bennett for another expert, Jason

Kiddy, with the limitation that Mr. Kiddy would merely “step into the shoes” of Mr.

Bennett and be bound by his prior opinions and testimony. (Rec. Doc. 182, at 1). As

Weeks points out, this assertion is complicated by the fact that Mr. Bennett’s

declaration and deposition contain conflicting statements. (Rec. Doc. 186, at 8).

Weeks points to several statements in Mr. Bennett’s declaration that the deem

to be conflicting relating to the Harada:

10/17/22 Bennett 61. The cleat design of Harada’s tracks does not lend itself

Declaration to traveling in muddy terrain contrary to the stated

(Rec. Doc, 127-11) purpose of Harada…Harada’s raft is unable to travel in

marshland, wetland, or muddy terrain.

64. Furthermore, Harada is completely silent on the ability

of the raft to travel on dry land, as recited in claims 1, 12,

and 13.

11/15/22 Bennett Ex. 20, Bennett Depo. at 129:1 to 129:7:

Deposition (Ex. 20) 1 Q. And it's your understanding that the

(Rec. Doc. 143-3) 2 track system would provide propulsion on soft or

3 muddy ground, correct?

4 A. Yes.

5 Q. And the track system would also provide

6 propulsion on dry land as well, correct?

7 A. It can drive on dry land, yes.

(Rec. Doc. 162, at 18, 19).

10/17/22 Bennett 55. …During embedment of the spud, the bottom lead

Declaration portion 41b of the spud will get hopelessly stuck in the mud

(Rec. Doc. 127-11) and will be impossible to retrieve. A POSITA will have to

completely re-design the spud embedment and retrieval

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assemblies, which is likely to take a considerable amount of

time and experimentation.

57. Harada’s application does not provide an enabling

disclosure for the spuds to be retracted above the bottom of

the pontoons, as claimed in Claims 1 and 12 of the ‘801

Patent.

11/15/22 Bennett Ex. 20, Bennett Depo. at 134:2 to 134:11; 151:1 to

Deposition (Ex. 20) 151:10:

(Rec. Doc. 143-3) 134

2 Q. So in your opinion you're interpreting

3 Figure 1 of the Harada reference as showing spuds

4 that would make contact with the ground when

5 traveling?

6 A. Yes.

7 Q. And do you believe a skilled artisan as

8 of 2003 would have known better than to make a

9 vehicle with spuds that are contacting the ground

10 when traveling on land?

11 A. I think they should have, yes.

* * *

151

1 Q. So with respect to Harada, is it your

2 opinion that a skilled artisan in looking at this

3 reference as a whole would have not located the

4 spuds above the bottom of the pontoon when trying

5 to make an actual functioning vehicle?

6 A. I think a skilled artisan would have

7 located the spuds such that they would be where

8 they would not drag in the water -- drag in muddy

9 situations or in -- on land and may have used a

10 different design of the spuds.

Id. at 19, 20.

As to the Zong, Weeks makes similar arguments regarding the sham affidavit

doctrine. Weeks points to the following testimony as an example of why Bennett’s

declaration regarding the Zong should be disregarded:

10/17/22 Bennett 69. In effect, Zong acknowledges that the track propulsion in

Declaration the water is inadequate and adds walking spuds to propel the

(Rec. Doc. 127-11) raft during afloat operations.

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71. …Any attempt at forward movement will cause the

suction pipe 14 to drag on the ground, damaging the suction

pipe, and any left, right, or reverse movement of the dredge

will simply break off this pipe.

11/15/22 Bennett Ex. 20, Bennet Depo. at 156:3-9, 169:6 to 170:1:

Deposition (Ex. 20) 156

(Rec. Doc. 143-3) 3 Q. All right. And do you agree that these

4 track systems are adapted to provide propulsion

5 for the vehicle when moving on land or in water?

6 A. I agree that there are tracks on those

7 pontoons that are intended to allow it to move on

8 land or in water, but I don't agree it can travel

9 on land.

* * *

169

6 Q. So a person with an engineering degree

7 and five years of experience, if they're looking

8 at the Zong reference, they would know how to

9 construct an amphibious vehicle that takes into

10 account the overall teachings of the Zong

11 reference and do so such that you don't have a

12 water intake pipe that is dragging below the

13 pontoons from traveling on land, correct?

14 A. Yes.

15 Q. Correct? Do you agree?

16 A. I agree that a person with an

17 engineering degree here should know better than

to

18 do that.

19 Q. Okay. And a person with an engineering

20 degree and five years experience dealing with

21 amphibious vehicles would be capable of creating

22 an amphibious vehicle that has some sort of a

23 retrieval system for a water intake pipe that you

24 wanted to use?

25 A. I think a person -- there should be a

1 person who would do that.

The sham affidavit doctrine allows a district court to “refuse to consider

statements made in an affidavit that are ‘so markedly inconsistent’ with a prior

statement as to ‘constitute an obvious sham.’ Winzer v. Kaufman County, 916 F.3d

16

464, 472 (5th Cir. 2019) (citing Clark v. Resistoflex Co., A Div. of Unidynamics Corp.,

854 F.2d 762, 766 (5th Cir. 1988). In Perma Research & Development Co. v. Singer

Co., 410 F.2d 572 (2d. Cir. 1969), the case which originated the sham affidavit

doctrine, the court noted that “[t]he deposition of a witness will usually be more

reliable than his affidavit, since the deponent was either cross-examined by opposing

counsel, or at least available to opposing counsel for cross-examination.” Id. at 578.

Affidavits, on the other hand, are typically drafted by counsel “whose familiarity with

summary judgment procedure may render an affidavit less credible.” Jiminez v. All

American Rathskeller, Inc., 503 F.3d 247 (3d Cir. 2007). However, the Fifth Circuit

has also stated that “the sham affidavit doctrine prevents a party who has been

deposed from introducing an affidavit that contradicts that person's deposition

testimony without explanation.” Free v. Wal-Mart Louisiana, L.L.C., 815 Fed. Appx.

765, 766 (5th Cir. 2020). See also Doe ex rel. Doe v. Dallas Independent School Dist.,

220 F.3d 380, 386 (5th Cir. 2000) (“a plaintiff may not manufacture a genuine issue

of material fact by submitting an affidavit that impeaches prior testimony without

explanation.”).

The sham affidavit doctrine is typically applied to instances when a subsequent

affidavit contradicts earlier deposition testimony. However, here, the declaration at

issue occurred prior to Mr. Bennett’s deposition. Wilco argues, although without

citing any supporting case law, that the sham affidavit doctrine is a misnomer and

actually applies when any second form of sworn testimony contradicts the first. Wilco

asserts that if the court finds sufficient inconsistencies between the affidavit and the

17

deposition, applying the sham affidavit doctrine here would result in disregarding

Bennett’s second testimony, his deposition, rather than his earlier expert report and

sworn affidavit. (Rec. Doc. 172, at 13). Wilco also argues that the sham affidavit

doctrine applies

when witness provides subsequent testimony in response to a summary

judgment filing. That did not happen here. Bennett’s expert report was

served on October 17, 2022; his deposition testimony was provided on

November 15, 2022; Weeks Marine’s summary judgment motion was

filed later that same day, November 15, 2022. Neither Bennett’s expert

report or his deposition testimony were provided directly in response to

Weeks Marine’s summary judgment motion.

Id. at 14. Therefore, Wilco argues that, if anything, the deposition should be

disregarded rather than the affidavit. Wilco also argues that Bennett’s testimony

does not rise to the level of a sham. Wilco is correct in asserting that not every

inconsistency between two instances of sworn testimony rises to the level of a sham.

However, Wilco’s argument on this topic is brief, and Wilco does not attempt to

explain how the inconsistencies pointed out by Weeks do not rise to the level of being

a sham. Finally, Wilco argues that even if the Court were to accept Weeks’ argument

and exclude Bennett’s expert report, that there would still be genuine issues of

material fact relating to the Harada and Zong references which would preclude

summary judgment.

Concerning Wilco’s arguments about the applicability of the sham affidavit

doctrine the Court is not persuaded that the true meaning of the doctrine would

require the Court to exclude the later taken deposition rather than the earlier

affidavit. The very rationale behind the rule is that depositions are more trustworthy

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since they involve cross-examination. Mr. Bennett’s affidavit (which is really just a

sworn version of his expert report) is not more reliable merely because it occurred

first. The Court rejects Wilco’s contention that Mr. Bennett’s deposition should be

disregarded. As to Wilco’s second argument that Mr. Kiddy should be substituted in

place of Mr. Bennett and bound to his testimony, the Court is also not persuaded. Mr.

Kiddy would be placed in the impossible position of sticking to testimony that

contradicts itself, and Wilco is perfectly able to use Mr. Bennett’s deposition in lieu

of his live testimony at trial.

In their supplemental submission, Wilco presents a new argument regarding

Mr. Bennett’s testimony: that the Court “is not required to turn to expert testimony

to determine whether the [sic] all of the limitations of a patent claim lie within the

four corners of a prior art reference.” (Rec. Doc. 183, at 7). Wilco cites Versata

Software, Inc. v. Internet Brands, Inc., 902 F. Supp. 2d 841 (E.D. Tex. 2012) in support

of this argument. In Versata, the court held that prior art references need not

necessarily be accompanied by expert testimony if they are easily understandable.

Id. at 848. However, as Weeks points out in their supplemental submission, nowhere

in Versata does the Court endorse ignoring expert testimony already in the record.

(Rec. Doc. 185, at 4). Therefore, the Court is left with several conflicting arguments

on Wilco’s part on what to do with Mr. Bennett’s testimony: disregard his deposition

(a suggestion which the Court has already heartily rejected), allow a substitute expert

to “step into his shoes” (a suggestion which would be impossible considering Mr.

Bennett’s conflicting opinions) or discount his expertise entirely (a suggestion

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unsupported by law or reason). The Court cannot merely rely on Mr. Bennett’s expert

report as Wilco surely hopes. Therefore, the Court must DENY Wilco’s reurged

Motion for Leave to Withdraw and Substitute Expert Witness (Rec. Doc. 182).

Turning then to some of the subjects of Mr. Bennett’s testimony, the Harada

and the Zong, the Court finds that these too represent examples of anticipatory prior

art. In opposing Weeks’ initial motion for summary judgment on the Harada and

Zong, Wilco relied exclusively on Mr. Bennett’s initial affidavit to establish a genuine

issue of material fact. However, when looking at his deposition, Mr. Bennett largely

agrees with Weeks’ expert on issues pertaining to the Harada and Zong. As to the

Harada, Mr. Bennett acknowledged in his deposition that a person of ordinary skill

in the art (“POSITA”) would understand that the Harada teaches each element of

Claim 1. In denying summary judgment, this Court found it persuasive that Mr.

Bennett opined that the track system on the Harada would become too clogged with

mud to properly operate. (Rec. Doc. 144, at 17). However, in his deposition, Mr.

Bennett admitted that the track system would be able to propel the Harada across

soft, muddy ground. (Rec. Doc. 143-3 at 129:1). Mr. Bennett similarly admitted in

regard to Claim 12 that a skilled artisan would know better than to make spuds that

stuck out too far to make land travel impossible. Id. at 134:2-11).

Mr. Bennett also made similar statements regarding the Zong as to Claim 1,

admitting that a POSITA would understand that the Zong teaches each element of

Claim 1. Wilco’s supplemental PowerPoint again presents no real arguments

concerning either the Harada or the Zong and merely rehashes issues regarding

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Claims 1 and 12 that Mr. Bennett already admitted in his deposition would not

prevent either device from being enabling. Therefore, the Court finds that as with the

MudMaster, Weeks has met its burden as to the Harada and Zong.

CONCLUSION

Accordingly, IT IS HEREBY ORDERED that Weeks’ Motion for

Reconsideration (Rec. Doc. 162) is GRANTED.

IT IS FURTHER ORDERED that summary judgment is GRANTED in favor

of Defendant, Weeks Marine, Inc.

New Orleans, Louisiana, this 19th day of July, 2023.

OF □□□□

SAX

CARL J. BARBIHR

UNITED sry DISTRICT JUDGE

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