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Entries for tag: Expert Reports

"Pick a card, any card . . . that's our secondary obviousness reference." Aditya Chinchure, Unsplash

Judge Andrews issued a short memorandum order today denying two Daubert motions based on an obviousness analysis where an expert identified a main reference and 24 additional references, without listing specific combinations.

The analysis apparently sorted the prior art into categories:

The main point of both motions is the assertion that Dr. Lepore has not identified specific combinations of prior art for his obviousness analysis. Defendants have referred to a portion of Dr. Lepore’s report where he lists categories of references. . . . [T]he expert has one reference as the “lead compound.” The expert has three additional categories of references: (1) four that show “c-Met’s role in various Cancers,” (2) six references “related to selecting a lead compound,” and (3) fourteen references “related to modifying the lead compound.”

As the Court explained, a usual case may involve a multiple-reference "state of the art" or motivation to combine analysis, so this is not a Daubert issue:

My view is that, in the usual case, an obviousness combination requires the identification of two or sometimes three references that disclose the requisite claim elements, and (usually) additional references, which can be ...

Ouch.
Ouch. Emil Kalibradov, Unsplash

Back in September we wrote about how Judge Andrews rejected an expert who relied on a 50/50 starting point to show damages in a patent case. We noted at the time that the defendant had moved to strike any follow-up theory by the plaintiff, and it wasn't clear that the Court had ruled on it before trial began.

Now we know what actually happened. Yesterday, the Court released its opinion on the motion to strike. In its opinion, the Court explained that after the plaintiff lost its damages expert, the plaintiff tried to "cobble together" a damages theory from various facts on the Friday before trial. The Court struck that new theory:

[Plaintiff] NexStep …

What's the worst they could say?
What's the worst they could say? Andrew E. Russell

It's easy to forget that, before the 2010 amendments to the Federal Rules of Civil Procedure, attorney communications with testifying experts and drafts of expert reports were often discoverable by the other side.

The amended Federal Rules offer more protection to those kinds of materials. But since the change, some attorneys have become much more open in their communication with testifying experts, and some experts have become much less sensitive to avoiding written records.

But post-2010 Rule 26 does not protect everything relating to a testifying expert's work. In fact, it has gaping holes, and protects only two things: "drafts of any report or disclosure" and "communications between the party's attorney …

Expert witnesses testifying in federal court are required to provide an expert report under Rule 26(a)(2). Although Rule 26 sets forth some requirements for the content of the report, it does not directly address how the report should be prepared, and in particular how much input the expert (as opposed to the party that has retained the expert, or the party's counsel) should have in preparing the report.

Some experts insist on writing their report in its entirety, while others rely heavily on counsel during the drafting and revising process. Too much reliance on others, however, can lead to a motion to exclude for violation of Rule 26's mandate that the report setting forth the expert's opinions be “prepared and signed by the witness." Judge Andrews recently resolved such a motion in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA, finding that while the plaintiff's expert had contradicted some of the reports from his report during deposition, that did not justify...

Even when plaintiffs know of the potential weak spots in their infringement cases, they sometimes fail to address DOE until too late, or they offer a DOE analysis so weak that it gets excluded or wiped out by summary judgment.

That's what happened last week, when Chief Judge Stark struck a DOE opinion after a plaintiff tried to squeak by on the idea that its late DOE argument should be permitted because it never affirmatively disclaimed DOE:

Arendi's passing reference to DOE in its complaints followed by its lack of affirmative disclaimer of DOE theories (see, e.g., C.A. No. 12−1595 D.I. 238 at 5) ("Arendi has never asserted that its claims were limited to literal infringement") does …