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V.Mane Fils S.A v. International Flavors and Fragrances

April 8, 2011

V.MANE FILS S.A., PLAINTIFF,
v.
INTERNATIONAL FLAVORS AND FRAGRANCES, INC., DEFENDANT.



The opinion of the court was delivered by: Wolfson, United States District Judge:

NOT FOR PUBLICATION [252]

OPINION

Presently before the Court is Defendant International Flavors and Fragrances Inc.'s ("Defendant" or "IFF") appeal from a May 6, 2010 Order by Magistrate Judge Douglas E. Arpert ("Judge Arpert") denying IFF's motion to preclude Plaintiff V. Mane Fils S.A. ("Plaintiff" or "Mane") from pursuing certain infringement claims against a series of IFF products on the basis that Mane failed to comply with an October 24, 2008 Scheduling Order ("Scheduling Order") by:

(1) not adequately detailing its "full and final" claim assertions in violation of Federal Rule of Civil Procedure 37(b)(2); and (2) by asserting additional claims that were not disclosed at the time required by the Scheduling Order.*fn1 For the reasons that follow, the Court denies Defendant's appeal of Judge Arpert's May 6, 2010 Order.

I. FACTS AND PROCEDURAL HISTORY

Because this patent infringement matter has a significant discovery and procedural history, the Court will only recount facts relevant to the instant motion. On May 22, 2006, Mane filed this suit against IFF asserting infringement by IFF of two patents Mane holds relating to the coolant composition monomenthyl succinate ("MMS"), U.S. Patent Nos. 5,725,865 (the "'865 patent") and 5,843,466 (the "'466 patent") (collectively, the "Patents"). V. Mane Fils S.A. v. Int'l Flavors & Fragrances, Inc., 249 F.R.D. 152 (D.N.J. 2008) (providing some background of the case). Mane asserts that two core cooling ingredients sold by IFF, Cooler 1 and Cooler 2 ("Cooler 2" or "MMG Products" or "Neat MMG"*fn2 ), infringe on the Patents. Cooler 2, the subject of the present appeal, is alleged to infringe Claim 13 of the '865 patent and Claim 5 of the '466 patent. Plaintiff contends that Cooler 2 is a "crude mixture" of monomenthyl glutarate ("MMG"), dimenthyl glutarate ("DMG"), and MMS, and that the amount of MMS present in Cooler 2 infringes on the Patents. Pl.'s Br. at 6-7. Mane's initial discovery requests to IFF seeking information regarding Cooler 2 were served in December 2006. Id.at7.

Thereafter, IFF refused to answer discovery requests concerning Cooler 2 on the basis that its responses would be limited to its product lines to which it "deliberately" added MMS. See, e.g., Docket No. 129, Exs. F-H. In November 2007, Mane tested an authenticated sample of Cooler 2 that was provided by IFF. Mane's analysis indicated MMS content of 0.074%, and because that amount exceeds the 0.01% that Mane asserts is a "significant" level of MMS, Mane continued to assert infringement against MMG Products. Docket No.84 at 2-3 n.1; Docket No. 129, Ex. D at ¶ 4; Pl.'s Br. at 25-26. In May 2008, Mane served a Supplemental Response to IFF's Third Set of Interrogatories, and included a claim chart, in which it alleged that Cooler 2 contains an "effective amount" of MMS and "at least one secondary coolant." Docket No. 129, Ex. L at 3. Beginning on August 28, 2008, IFF retained an expert, Harry Lawless ("Lawless"), specifically to investigate and report on the efficacy of Mane's assertions of infringement of the Patents by IFF's MMG Products. Docket No. 129, Ex. P; Docket No. 187-3 at 1.

Following the close of fact discovery, on October 24, 2008, former Magistrate Judge John Hughes ("Judge Hughes") entered a Scheduling Order, which directed: "Mane shall provide IFF with its full and final claim assertions no later than November 14, 2008."*fn3 Docket No. 71 at ¶ 3. On November 14, 2008, Mane provided IFF with its infringement assertions. Docket No. 124, Ex. I. The first 220 pages of the document addressed IFF's Cooler 1 products. The final page of the document addressed infringement assertions against IFF's MMG Products:

NEAT MMG AND MMG FORMULATIONS CONTAINING MMS

1. Neat MMG:

Mane asserts indirect infringement by IFF's Neat MMG which contains MMS for the reasons as stated above for Neat MMS and MMS formulations.

2. MMG Formulations:

To date, testing has been conducted on only a small sampling of MMG formulations. Based on the results of those tests [footnote], it appears that MMG formulations may directly infringe claims such as Claim 13 of the ['865] patent and Claim 5 of the ['466] patent. Additionally, these same MMG formulations would appear to indirectly infringe the patents in suit for the same reasons as discussed above with respect to Neat MMS and MMS formulations. This conclusion is based on a consideration of the test results as a whole, including the summary sheet and the extensive backup materials. Mane reserves the right to supplement this assertion in the event of receiving new information.

[footnote] This conclusion is based on a consideration of the test results as a whole, including the summary sheet and the extensive backup materials. Mane reserves the right to supplement this assertion in the event of receiving new information.

Id. at 221.

IFF believed Mane's MMG infringement assertions to be inadequate because Plaintiff failed to identify a secondary coolant and had not explained how the amount of MMS present in Cooler 2 constituted an "effective amount" -- required elements in the patent claims Mane asserts. Def.'s Br. at 15-16, 23-24. Therefore, on November 24, 2008, IFF wrote to Mane, and stated that because the "November 14, 2008 deadline for Mane to make its full and final infringement contentions" had passed, IFF believed that "MMG [was] not any part of Mane's case going forward." Docket No. 124, Ex. J. Mane did not respond to this letter. Def.'s Br. at 17.

At or around the same time, a dispute arose between the parties regarding procedures used in previous independent lab testing of MMG Products, which led Mane to file a motion to compel re-testing of the MMG Products. On December 4, 2008, Judge Hughes convened an onthe-record telephone conference with the parties to discuss Mane's motion for re-testing. Docket No. 129, Ex. A. Mane was asked by the court to respond to IFF's argument "that the MMS contained in MMG is not among your infringement contentions." Id. at 5. Mane responded, "there was infringement and we asserted it," and later noted, "we think the experts -- a lot of testimony will show that [Cooler 2] does infringe," and "[w]e will make our case. . ..

[T]here will be more testimony." Id. at 6, 11. The court denied Mane's motion for further testing, but did so without prejudice, instructing Mane, "[w]ell, make [your] argument [about Cooler ...


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