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Defense Expert Report on Non-Infringement Stricken Even Though Plaintiff Waited Until Just Before Trial to Move to Strike and Had Possession of Report for Nearly a Year

In this patent infringement action, plaintiff Hoyt Fleming (“Fleming”) moved to strike certain paragraphs of the report of Escort’s expert on its defense of non-infringement. One of Escort’s defenses to the charge of infringement was that Escort’s devices lock out false signals by using a process different from that described in Fleming’s patents. Escort asserted that false signals are locked out of Fleming’s invention when the device reaches a predetermined distance from the predetermined position of a false signal, but with Escort’s devices, the distance from a lockout varies.

Accordingly, as the district court explained, “Escort’s expert, Dr. Grindon, concluded, among other things, that ‘the asserted claims of the ‘038 patent are not infringed’ by Escort’s devices. Id. at pp. 1-8. In his claim-by-claim analysis set forth in that Supplemental Report — at paragraphs 21 through 42 — he concludes that Escort’s products do not infringe claims 1, 3, 5, 6, 7, 8, 23, 25, 26, and 27 of the ‘038 patent because those claims describe a device that locks out an alert if the device is a predetermined distance from a predetermined false signal, while with the Escort products, ‘the distance from a lockout varies.’ Id.”

The district court was not persuaded: “Dr. Grindon never explains how the Escort products lock out false signals. In its brief, Escort claims that Dr. Grindon — in his Supplemental Report and through that Report’s incorporation of Interrogatory Answers — has identified the lines of source code that perform the function of locking out false signals on Escort devices, and that by identifying the source code, has explained how the Escort products function so that ‘the distance from a lockout varies.’ But there is no such explanation in Dr. Grindon’s Supplemental Report.”

Escort then asserted that it would be unfair to exclude its expert opinion because Fleming waited until just before trial to challenge the expert report even thought it had the expert report for over a year. The district court also rejected this argument: “If Fleming challenged the report earlier, Escort argues, Dr. Grindon would have had time to amend his report to add the necessary explanations. But this argument ignores the Court’s Case Management Order, quoted above, that precludes experts from testifying to anything that is not in their report. If the Court were to allow endless amendments upon every challenge, the Court would also need to reopen discovery and delay all the deadlines and ultimately extend the trial date. The Case Management Order is quite clear that such a process is unacceptable.”

Accordingly, the district court granted Fleming’s motion to exclude portions of the expert report.

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This case is a clear reminder of the importance of putting everything into the expert report that the expert plans to offer at trial and making sure that proper support is also set forth in the expert report. Although some courts may permit supplementation based on a ruling by the court, a party cannot rely upon that to occur. Accordingly, the failure to include a proper basis for an opinion may be grounds to strike the expert report.

Fleming v. Escort, Inc. and Beltronics USA, Inc., Case No. 1:CV 09-105-BLW (D. Idaho May 23, 2012)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or