Chief Judge Stark Denies Parties’ Motions to Strike Expert Reports

September 1, 2016

Publication| Intellectual Property

In Masimo Corp. v. Phillips North America Electronics Corp., et al., C.A. Nos. 09-80 and 11-742 (D. Del. Aug. 15, 2016), Chief Judge Stark denied both parties’ motions to strike various expert reports. First, the Court denied the plaintiff’s motion to strike portions of the defendants’ reply expert report. The plaintiff argued that the defendants had violated a previous order of the Court that permitted the defendants to submit a reply report in response to a revised disclosure of the plaintiff’s expert, Kiani. While Chief Judge Stark concluded that the reply report was actually a response to another of the plaintiff’s experts, McNames, he concluded that, because McNames had relied on the revised Kiani disclosure, it was “not entirely unreasonable” for the defendants to wait until service of that disclosure before serving the reply expert report.

Second, Chief Judge Stark denied both the plaintiff’s motion to strike the defendants’ responsive expert report and the defendants’ motion to strike the plaintiff’s supplemental expert report. He noted that “[b]oth reports relate to whether certain versions and modifications of an accused product constitute acceptable non-infringing alternatives, a critical issue which impacts the reasonable royalty damages sought by Plaintiff.” Chief Judge Stark found that the plaintiff had diligently sought documents related to this issue and that, while the defendants had produced documents related to this issue, this production occurred at a time that made it impossible for the parties to provide expert reports according to the deadlines in the case schedule. The Court concluded that there would be no prejudice in admitting these reports. Finally, Chief Judge Stark denied the defendants’ motion to strike the plaintiff’s reply expert report, noting that it was directly responsive to the defendants’ expert report. In denying the defendants’ motion, the Court noted that it was not per se improper to use a different expert for a reply report than was used in the opening reports. Further, the Court noted that a party need not “address every possibility under the sun” in its opening expert report; however, a party must also not withhold arguments in the report that it should have known would be necessary in the opening report. Finding that the plaintiff had not done so, Chief Judge Stark denied the defendants’ motion.

Key Points: This ruling suggests that where supplemental expert reports are served by both parties, the Court will be inclined to allow the supplementation by all as long as the arguments are in response to issues raised in rebuttal reports.

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