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Motion to Strike Expert on Invalidity Denied Where Development Documents Were Disclosed Sufficiently in Final Invalidity Contentions

Plaintiff Baxter International (“Baxter”) sued CareFusion Corporation and Becton, Dickson and Company (“Defendants”) for infringement of three medical infusion pump patents, U.S. Patent Nos. 5,764,034 (the ‘034 Patent), 5,782,805 (the ‘805 Patent), and 6,231,560 (the ‘560 Patent). Baxter moved to strike portions of the Defendants’ invalidity expert, including asserting that the expert impermissibly expanded the scope of the final invalidity contentions.

As explained by the district court, in addition to using the patents for descriptions of physical prior art devices, the expert relied on them as prior art in and of themselves. Baxter contends that this was inappropriate because Defendants’ Final Invalidity Contentions identified the physical devices (the Orion Prototype and Signature Edition II (Model 7200) Pump) as the asserted prior art, not the patents. The district court disagreed finding that after a review of the final invalidity contentions, Baxter was mistaken. The district court concluded that “Defendants disclosed the Eggers, Voss, and Marston Patents as prior art” and the expert was free to rely on them as such.

Baxter also took issue with the expert using the Orion Prototype development documents as evidence of prior conception and diligence on grounds that this theory of invalidity was not expressed in the final invalidity contentions. The district court also disagreed with Baxter on this point, stating that “[t]o the contrary, Defendants state in their Final Invalidity Contentions that the Orion Prototype is prior art under pre-AIA 35 U.S.C. § 102(g), which provides that a patent is invalid if the invention was created first in time by another inventor and that inventor did not abandon, suppress, or conceal it.” Accordingly, the district court found that the expert could use the development documents for that purpose.

The district court also disagreed that the failure to disclose some of the development documents in the final invalidity contentions would preclude the expert’s reliance on them. “Baxter fails to cite authority for this position. The Local Patent Rules which govern Final Invalidity Contentions require only that the party identify the documents they assert are prior art, not every document the party expects to use in support of its claim. N.D. Ill. LPR §§ 2.3; 3.1; 3.3. As Kirkpatrick does not rely on the development documents as prior art, it is unproblematic that they were not all disclosed in the Final Invalidity Contentions.”

Accordingly, the motion to strike portions of the expert report was denied.

Baxter Int’l, Inc. v. Carefusion Corp., Case No. 15 C 9986 (N.D. Ill. Feb. 8, 2021)


The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or

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