A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Expert Witness

Court Bars Technical Expert's Testimony About Opposing Party's "Purported Litigation Misconduct, Corporate Culture, and Ethics"

Andrew E. Russell, June 28, 2022
Expert Witness Expert Discovery

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 …

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Can a "Patent Law Expert" Testify at Trial? Sometimes.

Andrew E. Russell, June 13, 2022
Expert Witness Exclusion

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 …
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Judge Andrews: 25-Reference Obviousness Analysis Without Specific Combinations Is Not a Daubert Problem

Andrew E. Russell, April 20, 2022
Expert Witness Obviousness

"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 ...
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Court Orders Production of Expert's Annotations of Opposing Expert's Report

Andrew E. Russell, Nov. 10, 2021
Expert Witness Expert Reports

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 …

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Defendant Narrowly Escapes Motion to Exclude After Flippant Remark by Expert at Deposition

Andrew E. Russell, Sept. 6, 2021
Depositions Expert Witness

Judge Burke last month addressed a motion to strike portions of an expert report regarding commercial acceptability of a non-infringing alternative.

As set forth in the report, an expert may rely on experience in the industry, but must explain "how that experience leads to the conclusions reached." Here, the expert opined that an alternative was commercially acceptable, but did not set forth why.

Then, when asked for more detail at his deposition, he responded with a snide comment:

[D]uring his deposition, [the expert] very ill−advisedly made things worse when he responded to a question on this subject by flippantly suggesting that he had "no backing" for the conclusion, and had simply "put [it] in on purpose" because Plaintiffs' expert similarly …
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Expert's On-the-Stand Admission That He Changed Opinion after Speaking to Attorneys, Resulting in $444,000+ in Fees, Insufficient to Render Case Exceptional

Andrew E. Russell, July 26, 2021
§ 285 Trial

"Oh god. What did our expert just say?" Jamie Haughton, Unsplash

More and more NPE cases have moved to Delaware over the last few years, following TC Heartland. Defendants often try to deal with NPE cases by threatening fees under 35 U.S.C. § 285, with varying degrees of success.

A § 285 fees opinion today by Judge Stark offers an interesting data point as to what kind of conduct is not sufficient to render a case as a whole exceptional under § 285, as well as a lesson on how to best to pursue a fees motion.

In Intellectual Ventures I LLC v. Trend Micro Inc., C.A. No. 12-1581-LPS (D. Del.), the patentee's …

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A Look Back at Judge Stark's First Remote Trial

Nathan R. Hoeschen, April 9, 2021
Remote Trials Expert Witness

Just as Delaware gears up to resume jury trials, Judge Stark has released his post-trial opinion for his first fully remote trial of the pandemic in AO Smith Corp. v. Bradford White Corp., C.A. No. 18-412-LPS.

The opinion -- long in the manner of all post-trial opinions -- is worth a read in full. But for my money the main takeaway is how large a roll witness credibility appeared to play in the final outcome, as the difficulty in assessing these things has long been an argument against fully remote trials.

As often happens, the infringement case amounted to a battle of the experts, and there does not appear to be any dispute about who won. Somewhat unusually, the …

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