Undeveloped Expert Report Calls For Deposition Before Production of Opposing Report

The court denied plaintiffs' motion to strike the report of defendants' expert for including a previously undisclosed obviousness theory because defendants' contentions sufficiently supported the expert report, but allowed plaintiffs to take the expert's deposition before producing their own expert's report. "[Defendants' invalidity contentions] disclose every item of prior art that renders the asserted claims obvious utilized by [the expert] in his report as well as the combinations of prior art used. They also provide an explanation of how a POSA would have been motivated to start with the exemplary compounds identified in [two sets of prior art references] to arrive at the linagliptin molecule at issue here. While Defendants could have included additional information in their invalidity contentions, the Court finds that said contentions provide a sufficient outline to support the more detailed narrative provided in [the expert's] report. . . . Nevertheless, the Court is sensitive to Plaintiffs’ apprehension that given the general nature of certain of [defendants' expert's] opinions, their expert would be hard-pressed to respond to same. Indeed . . . [the expert] does not identify what would be synthesized, what would be run through [a drug discovery process not disclosed in the invalidity contentions], what the hits would be, what the lead compound would be, how analogs would be created from the lead compound or how the analogs would be modified to reach linagliptin. Plaintiffs are concerned that given the lack of certain details not only would their expert have difficulty responding to same, but [the expert] may at some point in the future attempt to fill in the gaps. The Court finds that these are reasonable concerns. As such, while not usually the case, the Court shall permit Plaintiffs to depose [him] before producing their expert report."

Boehringer Ingelheim Pharmaceuticals, Inc. et al v. HEC Pharm Group et al, 3-15-cv-05982 (NJD October 5, 2017, Order) (Bongiovanni, MJ)