Friday, October 9, 2009

"Catch-All" Description of "Authors and Inventors of Prior Art" Does Not Satisfy FRCP 26 Obligation

The court granted plaintiff's motion to exclude the testimony of authors/inventors of prior art where defendant's FRCP 26 disclosures failed to identify the witnesses by name and instead identified them by the description "Authors and inventors of prior art references identified and produced in this Action." "[Defendant] argues that [plaintiff] had notice but does not explain why it failed to supplement. Allowing [the witnesses] would prejudice [plaintiff] in that they have not had the opportunity to depose either witness to learn the scope of their testimony. On the other hand, striking [the witnesses] does not strike the prior art reference; [defendant's] invalidity expert can still speak to the [prior art]. . . . Moreover, to rule that a catch-all phrase equals compliance with Rule 26 would shift the burden of identifying relevant witnesses to the other party. This would require parties to search through invalidity contentions, prior art, and prior art cited by prior art for potential witnesses. Such a result flies in the face of the spirit and purpose of the discovery rules."

Abstrax, Inc. v. Dell, Inc. et al., 2-07-cv-00221
(TXED October 7, 2009, Order) (Folsom, J.)

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