A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Expert Reports

Lawyers and an expert in an oasis
AI-Generated, displayed with permission

Here's a scenario that can happen in a patent case: The patentee serves an opening expert report alleging infringement. Your expert responds, detailing every reason why the design documents show non-infringment. The patentee then serves a reply expert report, citing new documents that it says show infringement.

What do you do now? There are at least four answers: (1) move for leave to serve a sur-reply report to address the new docs; (2) just serve a sur-reply report, without leave, and fight the inevitable motion to strike; (3) skip the report but have the expert be prepared to discuss the new papers at deposition, and hope plaintiff asks; or (4) just plan to address the new …

Today's case begins with what I imagine is the worst expert report ever presented in a patent case. How do I know that? Because the whole thing was 2 pages, about half of which was explaining that he was not "retained or specially employed to provide expert testimony" and thus did not have to provide a report under Rule 26(a)(2)(B), but merely a summary of opinions under (a)(2)(C). The entirety of the substantive portion of the report is about the same length as this introductory paragraph, which I wrote in less time than it took me to drink a delicious diet pepsi. I was thinking about just block-quoting it here, but it really screwed with the formatting, so you'll just …

I have no idea what picture would go with this post. Enjoy some nice, royalty-free antelope.
I have no idea what picture would go with this post. Enjoy some nice, royalty-free antelope. NEOM, Unsplash

Years ago, Judge Stark added language to his form scheduling order to resolve a common dispute: can an expert submit a declaration in support of summary judgment?

The language requires the parties to agree in advance, at the start of the case, whether they will permit this:

Expert Report Supplementation. The parties agree they [will] [will not] [CHOOSE ONE] permit expert declarations to be filed in connection with motions briefing (including case-dispositive motions).

Judge Stark has since moved up, but several D. Del. judges still use this language in their scheduling orders, including Judges Noreika, Hall, Burke, and …

Is there corporate culture in there? Let's hear from our expert...
Slejven Djurakovic, Unsplash

When expert reports go back and forth in a patent case, it's not uncommon to see complaints from the patentee's expert along the lines of "I understand that the opposing party did not produce information regarding x, so I will instead base my opinions y."

In other words, the expert wants to keep the door open to explain to the jury that he or she would have done a particular analysis if only the other side had given them the information they needed. But, obviously, the other side may object to that testimony.

Judge Connolly addressed a situation like yesterday, and held that the expert cannot just testify to the jury about the other sides alleged …

The Federal Judicial Center patent video. I find it exciting to watch, for a moment, because it reminds me the start of a jury trial...
The Federal Judicial Center patent video. I find it exciting to watch, for a moment, because it reminds me the start of a jury trial... Federal Judicial Center

Every once in a while, parties will offer a "patent law expert" with opinions about patent office proceedings, such as patent prosecution. Often, smart opposing counsel will move to exclude that testimony, and it's not unusual for the Court to grant those motions.

A decision last week reminded of this issue. Late last week, Judge Burke granted a motion to preclude some expert testimony about patent prosecution, and excluded expert testimony regarding the patent examiner and plaintiffs' state of mind:

ORAL ORDER: The Court, having reviewed the portion of Plaintiffs' Daubert motion …

"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. 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 …