Chief Judge Stark Grants in Part and Denies in Part Cross-Motions to Strike Portions of Expert Reports

March 7, 2017

Publication| Intellectual Property

In Intellectual Ventures I LLC v. AT&T Mobility LLC, C.A. Nos. 12-193-LPS, 13-1632-LPS, 13-1633-LPS, 13-1635-LPS, 13-1636-LPS, 13-1637-LPS, 15-799-LPS, 15-800-LPS (D. Del. Jan. 31, 2017), Chief Judge Stark ruled on four motions to strike portions of expert reports and plaintiff Intellectual Ventures I LLC’s (“IV”) request for reconsideration of the Court’s invalidity ruling in light of recent Federal Circuit precedent. The four motions to strike were directed to three of IV’s experts and one of the defendants’ experts. IV’s three experts were accused of proffering new and untimely opinions and information. Chief Judge Stark agreed with the untimeliness argument and granted most of the defendants’ requests. In particular, Chief Judge Stark reviewed IV’s expert’s reply report to determine whether it contained “new opinions” and “supplemental analyses not disclosed” in the opening report or, instead, proper responses to issues raised in the opposition reports. Upon review, Chief Judge Stark found that the reply portions “d[id] not solely contradict or rebut evidence raised in Defendants’ rebuttal reports . . . and that portions of it [we]re subject to being excluded under Rule 37(c)(1).”

However, Chief Judge Stark found that, for the first of IV’s challenged experts, there was sufficient time to cure the prejudice (11 months until trial) by allowing the defendants leave to serve sur-reply reports, extending expert discovery, requiring a written explanation for the change in opinions, and requiring IV to pay 2/3 of the “reasonable expert costs incurred in connection with the preparation of the sur-reply reports.” For the second IV expert, Chief Judge Stark noted that the theory was entirely new and, as IV’s “explanation for withholding the [newly added analysis] until a reply report . . . strongly suggest[ed] that [the expert’s] omission of it from his opinion from his opening report was intentional and reflected his view as to its relative unimportance,” the motion to strike was granted. Finally, Chief Judge Stark granted one defendant’s motion to strike supplemental exhibits to an expert report that untimely doubled the damages figure as a violation of the scheduling order.

IV also alleged that one of the defendants’ experts improperly brought a prior art reference into the case through his reply report, which was not previously disclosed in his opening validity report or in the defendants’ final invalidity contentions. Chief Judge Stark found that reliance on the “new” reference was proper rebuttal and, as such, denied the motion to strike. Finally, the Court addressed IV’s motion for reconsideration of the Court’s invalidity decision in light of the Federal Circuit’s holding in Trading Techs. Int’l, Inc. v. CQG, 2017 WL 192716 (Fed. Cir. Jan. 18, 2017). Chief Judge Stark denied the request, finding that IV did not comply with the local rules (D. Del. LR 7.1.2, 7.1.1, and 7.1.5) and noting that “it appears unlikely that anything in the non-precedential TTI opinion would persuade the Court to alter its conclusion.”

Key Points:  This decision shows how difficult it can be to determine whether reply expert reports are offering new or merely rebuttal opinions. As Chief Judge Stark noted, “[t]he line between improper ‘new’ opinions and acceptable ‘rebuttal’ (or reply) opinions is not always entirely clear.”

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