Sd3, LLC v. Dudas, 71 F. Supp. 3d 189

Background

SD3, LLC sued the USPTO under 35 U.S.C. § 145 seeking allowance of two patent claims for saw-stopping safety technology that stop a blade within 10 ms (claim 1) and 5 ms (claim 30).
The PTO denied the application as anticipated/obvious based on the 1974 Friemann patent, which describes similar detection and braking circuitry and asserts stopping times of ~10 ms and experiments showing ~5 ms.
The BPAI affirmed the Examiner, finding the Friemann patent enabled a person of ordinary skill to make the claimed system and that SD3 failed to show the 5 ms limitation was non-routine optimization.
SD3 moved for summary judgment and to exclude the PTO’s expert testimony (Dr. Charles Landy and Michael Gililland); the PTO submitted an untimely supplemental Landy declaration after the expert deadlines.
The Court found Landy’s supplemental declaration to be an untimely expert disclosure but declined to exclude it, instead reopening discovery narrowly to allow SD3 a deposition on that declaration.
The Court denied SD3’s motions to exclude the experts and for summary judgment, concluding material factual disputes exist (enablement/what Friemann teaches and the feasibility of claimed stopping times) that preclude judgment as a matter of law.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Timeliness of Dr. Landy supplemental declaration	Landy’s declaration was filed after expert-deadline, attempts to bolster testimony, and is prejudicial and unjustified	Declaration responds to calculations raised at deposition; permitted supplementation under Rule 26(e)	Declaration deemed untimely under Rule 26(e) but not excluded; discovery reopened narrowly to permit deposition on it
Exclusion of PTO experts (Daubert reliability)	Experts rely improperly on Friemann’s assertions and lack independent scientific analysis; testimony unreliable	Experts provide technical analysis, literature, calculations and experience assessing enablement and SD3’s experts	Experts not excluded; testimony deemed sufficiently reliable and helpful to the court as factfinder
Enablement / anticipation (Friemann enables stopping times)	Friemann cannot physically enable stopping blades in 10 ms or 5 ms; impossibility shows lack of enablement, so SD3 entitled to summary judgment	PTO experts dispute technical assumptions, provide calculations and alternative component choices showing feasibility; factual dispute exists	Summary judgment denied; genuine issues of material fact exist as to enablement, what Friemann teaches, and whether undue experimentation is required
Reopening discovery for prejudice cure	Deposition not needed; late filing should be excluded	Brief, limited reopening will cure prejudice and allow adequate response	Court will briefly reopen discovery solely to allow deposition of Dr. Landy on his supplemental declaration

Key Cases Cited

SD3, LLC v. Dudas, 952 F. Supp. 2d 97 (D.D.C. 2013) (prior district opinion setting factual background and issues)
Daubert v. Merrell Dow Pharm., 509 U.S. 579 (1993) (gatekeeper standards for expert reliability)
Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999) (Daubert factors apply to technical expert testimony)
Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (summary judgment burden when movant bears trial burden)
Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) (genuine dispute and materiality standards for summary judgment)
Elan Pharms., Inc. v. Mayo Found., 346 F.3d 1051 (Fed. Cir. 2003) (anticipation and enablement principles)
In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) (presumption that cited patent references are enabling)
Impax Labs., Inc. v. Aventis Pharms., 545 F.3d 1312 (Fed. Cir. 2008) (Wands factors for undue experimentation and enablement)
In re Wands, 858 F.2d 731 (Fed. Cir. 1988) (enumerating factors to evaluate undue experimentation)
In re Sasse, 629 F.2d 675 (CCPA 1980) (standard for when a printed publication enables a person of ordinary skill)