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Dataquill Limited v. High Tech Computer Corp

August 26, 2011


The opinion of the court was delivered by: Hon. Bernard G. SkomalU.S. Magistrate Judge


[Doc. No. 112.]

On August 3, 2011, DataQuill filed, ex parte, a motion to strike Mark Lanning's expert report. (Doc. No. 112.) HTC filed an opposition on August 10, 2011. (Doc. No. 115.) On August 12, 2011, the Hon. Irma E. Gonzalez referred the matter to the undersigned. (Doc. No. 116.) The Court held a telephonic discovery hearing on August 16, 2011. Greg Smith, Esq. argued on behalf of DataQuill and Pete Chassman, Esq. argued on behalf of HTC. For the reasons stated during the hearing and as set forth below, the Court DENIES DataQuill's motion to strike Mark Lanning's expert report.


This is a patent infringement case, and there are two patents-in-suit: U.S. Patents Nos. 6,058,304 ("the '304 Patent") and 7,139,591 ("the '591 Patent"). In the present action DataQuill continues to assert 80 patent claims, each containing numerous claim elements. (Doc. No. 115 at 5.) HTC previously served invalidity contentions based on DataQuill's original assertion of 159 effective claims. (Doc. No. 73 at 3.) It took over four thousand pages for HTC to present those contentions. (Id.) Because HTC believed that allowing DataQuill to proceed to trial on more than 10 claims would be unreasonable and impractical, in January 2011 it filed a motion to limit the number of asserted patent claims. (Doc. No. 73.) HTC argued that continuing to trial on a large number of claims would be substantially burdensome on the parties, the court and the jury. (Id.) HTC further argued that due to the high number of asserted claims the jury would be forced to consider an immense "number of prior art invalidity defense combinations." (Id. at 5.) DataQuill opposed the motion, contending that the number of asserted claims would not be unmanageable, and implicitly accepted that HTC would continue to litigate its invalidity case on the vast number of theories disclosed in its contentions. (Doc. No. 74 at 5.) Ultimately, Judge Gonzalez denied HTC's motion without prejudice. (Doc. No. 87.)

HTC designated Mark Lanning as its expert on invalidity. Pursuant to Fed. R. Civ. P. 26(a)(2)(B), Mr. Lanning produced a written report on July 18, 2011. (Doc. No. 115 at 2.) Mr. Lanning's report sets forth his "opinions as to the invalidity of the Asserted Claims of the Patents-in-Suit, and the underlying bases and reasons for those opinions." (Lanning Report, Doc. No. 114 at 10.) Mr. Lanning opined that the patents are invalid based on anticipation, obviousness, lack of enablement, and improper inventorship. ( Id. at 13-16.) Section eight of the report contains Mr. Lanning's opinion that the invention of the patents-in-suit are invalid based on prior art. (Id. at 47.) The report goes on to describe, in detail, the "obvious combinations of prior art that render the Asserted Claims of the Patents-in-Suit invalid." (Id. at 57-70.) The appendix to Mr. Lanning's report contains further descriptions and analyses of how certain prior art, either alone or in combination with other prior art, meet the limitations of the asserted claims. (See Appx. to Lanning Report, Doc. Nos. 112 and 114.)

DataQuill filed the instant motion to strike on August 3, 2011. (Doc. No. 112.) DataQuill seeks an order from this Court striking Mr. Lanning's entire report for failure to comply with Fed. R. Civ. P. 2 08cv543-IEG 26(a)(2)(B). (Id.) DataQuill contends that the report "fails to state the testimony the witness is expected to present during direct examination at trial" because it identifies an "unwieldy" number of invalidity theories." (Doc. No. 112 at 2-3.)


Federal Rule of Civil Procedure 26(a)(2) sets forth the required disclosures relating to expert testimony. Fed. R. Civ. P. 26(a)(2). Rule 26(a)(2)(B) mandates that in addition to disclosing the identity of the expert witness, the witness must produce a written report containing:

(i) a complete statement of all opinions the witness will express and the basis and reasons for them;

(ii) the facts or data considered by the witness in forming them;

(iii) any exhibits that will be used to summarize or support them;

(iv) the witness's qualifications, including a list of all publications authored in the previous 10 years;

(v) a list of all other cases in which, during the previous 4 years, the witness testified as an expert ...

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