Friday, March 2, 2018

Expert’s Secondary Considerations Opinions Struck Due to Inadequate Discovery Response

The court granted defendant's motion to strike portions of the report of plaintiff's infringement expert regarding previously undisclosed secondary considerations of nonobviousness. "⁠[Plaintiff] argues that [defendant's] interrogatory was premature because it asked for expert opinion, but [plaintiff] was at least obligated to provide the factual basis for any secondary considerations, and include this factual basis in the interrogatory response itself. . . . The important point, in the Court’s view, is that [plaintiff] not only failed to disclose the factual basis for any secondary considerations, but failed to even disclose any reliance on secondary considerations at all. The prosecution history includes a discussion of secondary considerations . . . yet even this basis for secondary considerations was not included in [plaintiff's] interrogatory response. . . . Although secondary considerations may be important, the prejudice to [defendant] is significant, particularly because [plaintiff] did not disclose the facts it already had knowledge of upon which it would rely."

Semcon IP Inc. v. Huawei Device USA Inc. et al, 2-16-cv-00437 (TXED February 28, 2018, Order) (Payne, MJ)

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