UNITED STATES DISTRICT COURT FOR THE 

DISTRICT OF NEW HAMPSHIRE

Marine Polymer Technologies, Inc.

v. Civil No. 06-cv-100-JD

Opinion No. 2010 DNH 057

HemCon, Inc.

O R D E R

Marine Polymer Technologies, Inc. has filed two motions in

limine addressing the testimony of HemCon, Inc.’s expert witness,

Dr. John Michael Dornish. Marine Polymer asks that Dr. Dornish

be precluded from testifying to the substance of the opinions

first disclosed in supplementary declarations provided on March 8

and March 11, 2010. Marine Polymer also asks the court to limit

Dr. Dornish’s opinions on invalidity to those expressed in his

expert report. HemCon objects to both motions.

A scheduling order issued in this case on June 28, 2006. 

Under the deadlines established in the order, the parties were

required to disclose the identities of their experts by March 23,

2007, and to serve expert reports by May 4, 2007. Expert

rebuttal reports were due by May 25, 2007. 

The scheduling order set June 22, 2007, as the deadline for

providing supplementation of expert reports: “Supplementations

under Rule 26(e), Fed. R. Civ. P., due June 22, 2007.” All

Case 1:06-cv-00100-JD Document 269 Filed 04/02/10 Page 1 of 12
challenges to expert testimony were due on August 3, 2007. On

April 23, 2007, the court granted the parties’ joint motion to

extend the deadline for serving expert reports to May 25, 2007,

and the deadline for rebuttal reports to June 15, 2007. The

other deadlines remained unchanged.

HemCon retained Dr. Dornish as its expert witness and

provided his expert report, which is dated May 23, 2007, to

Marine Polymer. In his report, Dr. Dornish discusses bandages

that HemCon developed, the manufacturing process for those

bandages, chitan and chitosan, the meaning of terms used in the

‘245 patent, prior art pertaining to biocompatible chitosan,

source materials for chitosan, and his opinions on the validity

of the ‘245 patent. 

On January 31, 2008, the court granted Marine Polymer’s

motion to exclude the testimony of HemCon’s expert witness, John

L. Alex, on the ground that HemCon had not shown that Alex was

qualified, as required under Fed. R. Evid. 702, to testify to the

disclosed opinions. The court denied Marine Polymer’s motion

challenging Dr. Dornish’s opinions.

After briefing and a Markman hearing, the court issued a

claim construction order on May 6, 2008. In the order, the court

construed disputed claim terms, including an interpretation that

the ‘245 patent claims did not include a source limitation,

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rejecting interpretations offered by HemCon. After the parties

filed motions for summary judgment, the court ordered additional

briefing on a claim construction issue that arose in the motions. 

The court addressed the parties’ motions to strike all or part of

witnesses’ declarations filed in support of or in opposition to

summary judgment and held that parts of Dr. Paul A. Sandford’s

declaration be struck because they expressed expert opinions when

HemCon had not disclosed Sandford as an expert. 

On July 9, 2009, the court issued its second claim

construction order, concluding that the asserted claims of the

‘245 patent did not include a protein-free limitation. HemCon’s

motion for summary judgment was denied the same day. The court

granted Marine Polymer’s motion for summary judgment of literal

infringement on October 27, 2009. HemCon’s motions for

reconsideration, for a continuance, for additional discovery, and

for clarification of the court’s order denying reconsideration

were all denied.

Jury selection is now scheduled for April 14, and evidence

is to begin on April 19, 2010. The final pretrial conference is

set for April 7, and the deadline for pretrial filings was March

16, 2010. HemCon served two declarations from Dr. Dornish, one

on March 8 and the other on March 11, 2010, which supplemented

Dr. Dornish’s May 23, 2007, expert report.

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I. Motion to Preclude Testimony Based on March, 2010,

Declarations

Marine Polymer contends that Dr. Dornish’s recent

declarations are both untimely and improper attempts to

supplement his 2007 expert report. HemCon responds that the

declarations are timely supplements under Federal Rule of Civil

Procedure 26(e), are timely within the context of the case, and

that Marine Polymer was aware of the newly cited prior art

references.

Dr. Dornish provided a declaration, dated March 8, 2010, in

which he acknowledges the asserted claims in the ‘245 patent, the

court’s claim construction, and the court’s ruling on March 4,

2010, on HemCon’s motion to clarify. Dr. Dornish states that in

preparation for his declaration he reviewed a declaration of Dr.

Sandford, dated August 31, 2008, and states that Dr. Sandford’s

declaration is based on his “personal experience and knowledge in

a manner consistent with the opinions expressed in [Dr.

Dornish’s] report” and that he incorporates Dr. Sandford’s

opinions pertaining to the scope and content of prior art and the

invalidity of claims in the ‘245 patent. Dr. Dornish also cites

additional materials he has reviewed, which he states bolster his

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opinions about the scope and content of prior art and the

invalidity of the asserted claims. 

In his declaration dated March 11, 2010, Dr. Dornish

discusses an article written by Dr. Sandford in 1991, an article

by Malette published in 1986, an article by Balassa published in

1978, and an article by John Vournakis published in 1993. Dr.

Dornish states that taking into account the articles he reviewed

for his 2007 report, along with the additional articles and the

court’s claim construction, he continues to be of the opinion

that the asserted claims of the ‘245 patent are invalid. He does

not elaborate on the basis for his conclusion of invalidity. 

A. Timeliness

“For an expert whose report must be disclosed under Rule

26(a)(2)(B), 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). 

“Unless the court orders otherwise,” supplementation under Rule

26(e)(2) must be made “at least 30 days before trial.” Fed. R.

Civ. P. 26(a)(3)(B) (emphasis added). “Deadlines established by

the court shall not be changed by agreement without court

approval.” LR 16.4(a).

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In this case, pretrial disclosures were due on March 16,

2010, thirty days before trial. With respect to supplementation

of expert reports, however, the court ordered as part of the

scheduling order, that supplementation under Rule 26(e) was due

on June 22, 2007.1 Under Rule 26(a)(3)(B), the deadline ordered

by the court supercedes that provided in the rule. Therefore, to

the extent HemCon intended the new declarations provided by Dr.

Dornish to supplement his 2007 report, they are untimely under

the court’s scheduling order.

To overcome its untimely supplementation, HemCon must show

that the delay was substantially justified or harmless. Fed. R.

Civ. P. 37(c)(1). HemCon suggests that the court’s order issued

on March 3, 2010, justifies its supplementation of Dr. Dornish’s

report. HemCon also contends that five of the six additional

prior art references introduced by the new declarations were

already known to Marine Polymer.

1. Justification

HemCon states that Dr. Dornish’s new declarations address

the court’s Markman ruling on March 3, 2010. In the March 3

1“[T]he pretrial disclosures required by Rule 26(a)(3) are

usually otherwise directed by the court, because they are

contained in the court’s pretrial order.” 6 Janes Wm. Moore, et

al., Moore’s Federal Practice § 26.131[2] (3d ed. 2009).

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order, the court granted in part and denied in part HemCon’s

motion to “clarify” the court’s prior order denying HemCon’s

motion for reconsideration of summary judgment on infringement. 

Nothing in the order construes a claim term or addresses claim

construction. Instead, the court held that Hemcon was deemed to

have admitted that its product met the elution test requirement

and that HemCon waived the issue of the elution test requirement. 

In the alternative, the court stated that even if the elution

test requirement had been properly raised, which it was not, the

record evidence showed that HemCon’s products at least met the

requirement under the doctrine of equivalents through testing for

cytotoxicity. 

The court’s alternative ruling that the record evidence

equated an elution test with testing for cytotoxicity was not

claim construction. The court did not construe “elution test,”

as used in the asserted claims of the ‘245 patent, to mean

“cytotoxicity testing.” Instead, the court concluded that for

purposes of the infringement summary judgment motion and

objection in this case, the record the parties presented showed

that HemCon deemed the results of the testing to be at least

equivalent. In contrast to that fact-based result, claim

construction is a legal determination. Markman v. West view

Instruments, Inc., 517 U.S. 370 (1996). Therefore, the March 3

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order was not a claim construction order and did not provide any

grounds for supplementation of Dr. Dornish’s report.2

2. Harmless

HemCon also argues that four of the five additional prior

art references Dr. Dornish introduces through his recent

declarations were known to an inventor listed on the ‘245 patent,

Dr. Vournakis. Whether or not the new references were known to

Vournakis or to Marine Polymer, Dr. Dornish’s opinions based on

the new references were not disclosed until just weeks before

trial. Introducing new theories at this stage of the litigation

is prejudicial. See, e.g., Pfizer Inc. v. Ivax Pharms., Inc.,

2009 WL 2905454, at *5 (D.N.J. Sept. 9, 2009) (precluding

expert’s testimony on new items because opposing party had not

had opportunity to depose expert on those matters); Welch v. Eli

Lilly & Co., 2009 WL 700199, at *4-*5 (S.D. Ind. March 16, 2009)

(stating that Rule 26(e) does not give “a license to disregard

discovery deadlines and to offer new opinions under the guise of

the supplemental label” and that necessary discovery would cause

further delay). 

2To the extent the March 3 order suggested new theories to

HemCon, that is not a basis for supplementing its expert’s report

within weeks of trial.

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B. Improper Supplementation

Marine Polymer also contends that the declarations are not

proper supplementation of Dr. Dornish’s expert report. Marine

Polymer challenges the declarations because they continue to rely

on a rejected construction of claim terms, because they do not

provide a claim-by-claim analysis addressing each limitation as

is required to show anticipation, because Dr. Dornish has added

opinions on obviousness and other matters that were not included

in his 2007 report, and because Dr. Dornish attempts to

incorporate Sandford’s opinions and to bolster statements made in

Sandford’s declaration, part of which has been stricken.

All of the additional materials Dr. Dornish cites were

available before he submitted his expert report in May of 2007. 

“A party may not use a supplemental report to disclose

information that should have been disclosed in the initial expert

report, thereby circumventing the requirement for a timely and

complete expert report.” 6 Moore’s Federal Practice § 26.131[2]. 

Therefore, a supplemental report cannot include new opinions not

expressed in the original report. See Matthews v. Remington Arms

Co., Inc., 2009 WL 1490691, at *1 (W.D. La. May 27, 2009) (“[A]n

expert report that contains new opinions based on information

available prior to the expiration of the expert report deadline

is not supplemental.”). 

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With respect to Dr. Dornish’s effort to bolster and present

parts of Dr. Sandford’s declaration, that part of Dr. Dornish’s

declaration pertaining to what Dr. Sandford knew is not based on

Dr. Dornish’s personal knowledge and Dr. Dornish’s vouching for

Dr. Sandford’s opinions is an improper attempt to incorporate the

opinions of an undisclosed expert.3 See Dura Auto. Sys. of Ind.

Inc. v. CTS Corp., 285 F.3d 609, 614 (7th Cir. 2002); Bouygues

Telecom, S.A. v. Tekelec, 472 F. Supp. 2d 722, 728 (E.D.N.C.

2007); see also Insight Tech., Inc. v. SureFire, LLC, 2007 WL

3244092, at *8 (D.N.H. Nov. 1, 2007). In addition, Dr. Dornish’s

opinions about Dr. Sandford were not part of his 2007 expert

report.

C. Declarations Rejected

Because Dr. Dornish’s declarations submitted on March 8 and

March 11, 2010, were untimely and are not proper supplementation

under Rule 26(e), they cannot form the basis of Dr. Dornish’s

testimony at trial.

3As Marine Polymer pointed out, several of the statements in

Dr. Sandford’s declaration were struck by the court as expert

opinions because Dr. Sandford was not disclosed as an expert.

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II. Motion to Limit Dr. Dornish’s Testimony on Invalidity to the

Opinions Disclosed in His Expert Report

Marine Polymer moves to limit Dr. Dornish’s testimony at

trial to the opinions he disclosed in his 2007 expert report. 

HemCon contends that the rules do not limit Dr. Dornish’s

testimony to merely reading his expert report, and instead, he is

permitted to supplement, elaborate upon, explain, and answer

cross examination about his report. HemCon’s response indicates

that HemCon takes a broad view of the subject matter available

for Dr. Dornish’s testimony. 

As is discussed above, Dr. Dornish will not be permitted to

testify about matters disclosed in his declarations that were not

disclosed in his 2007 report. Rule 26(a)(2)(B) requires

disclosure of an expert report that provides all of the expert’s

opinions and the reasons and bases for them; the data or

information considered by the expert; all exhibits that will be

used to demonstrate the opinions; the witness’s qualifications as

an expert; a list of all cases in which the witness has testified

in the past four years; and a statement of compensation. The

information required under Rule 26(a)(2)(B) is necessary to avoid

unfair surprise to the opposing party from an expert witness’s

testimony. Muldrow ex rel. Estate of Muldrow v. Re-Direct, Inc.,

493 F.3d 160, 167 (D.C. Cir. 2007). Although the rule does not

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limit an expert to reading his report, the expert cannot testify

about matters that were not disclosed under Rule 26(a)(2)(B)

unless the party offering the expert can meet the requirements of

Federal Rule of Civil Procedure 37(c)(1). Id.; see also OrtizLopez v. Sociedad Espanola de Auxilio Mutuo Y Beneficiencia de

P.R., 248 F.3d 29, 35 (1st Cir. 2001).

Therefore, Dr. Dornish’s testimony at trial is limited to

the opinions and bases for those opinions that were disclosed in

his 2007 report.

Conclusion

For the foregoing reasons, Marine Polymer’s motion to

preclude Dr. Dornish from testifying based on his recently filed

declarations (document no. 207) and motion to limit Dr. Dornish’s

testimony to the opinions expressed in his 2007 report (document

no. 206) are granted.

SO ORDERED.

____________________________

Joseph A. DiClerico, Jr.

United States District Judge

April 2, 2010

cc: Julie M. Baher, Esquire

Garet K. Galster, Esquire

Daniel R. Johnson, Esquire

Heather E. Krans, Esquire

Joseph A. Kromholz, Esquire

Lynda Q. Nguyen, Esquire

Brian M. Poissant, Esquire

Daniel D. Ryan, Esquire

Ognian V. Shentov, Esquire

Jonathan M. Shirley, Esquire

Daniel E. Will, Esquire

Leigh S. Willey, Esquire

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