Summary
This Memorandum Order from the U.S. District Court for the Eastern District of Texas addresses Plaintiff's Motion to Strike portions of Defendant's expert report by Dr. Dan Schonfeld. The Court evaluates the motion under Federal Rules of Civil Procedure 26 and 37, focusing on the failure to timely disclose certain LG engineers relied upon for non-infringing alternative opinions. Applying the factors for excluding untimely evidence, the Court grants the motion in part, striking only those sections of the report that rely on the undisclosed engineers while denying the remainder.
Topics
Practice areas
Questions Presented
- Whether portions of Dr. Schonfeld's expert report should be stricken because they relied on a reference that allegedly did not qualify as prior art.
- Whether portions of Dr. Schonfeld's non-infringing-alternative opinions should be excluded under Federal Rules of Civil Procedure 26 and 37 because they relied on undisclosed or improperly supplemented witnesses.
Holdings
- The court denied the motion to strike on the prior-art basis for the same reasons stated in its separate order addressing the motion to strike portions of Loren Terveen's expert report.
- When an expert relies on individuals with relevant knowledge in forming opinions, the opposing party's failure to timely disclose those individuals and supplement the disclosure as necessary may warrant exclusion of the portions of the expert report that rely on them under Rule 37(c)(1).
- The issue concerning Hyun-Seung Lee was moot because Dr. Schonfeld relied on Lee only for opinions concerning patents that Multimedia no longer asserted.
Key quotations
“Vigorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence.” (II.A)
“The Court finds that LG failed to disclose all of the engineers with whom Dr. Schonfeld talked during the formation of his NIA opinions, striking is not appropriate here.” (III.B)
“For the reasons discussed above, the Motion is GRANTED only in PART as to Dr. Schonfeld’s report regarding NIA opinions which rely on Kwang-Hee Jang or Jae-Won Oh, but otherwise DENIED.” (IV)
Factual background
Multimedia asserted several patents against LG, including U.S. Patent Nos. 9,055,254, 9,055,255, 9,247,174, 9,510,040, and 10,419,805. Dr. Dan Schonfeld prepared expert opinions concerning non-infringing alternatives and stated that his opinions were informed by conversations with LG engineers Kwang-Hee Jang and Jae-Won Oh. LG did not timely disclose Jang and Oh as persons with relevant knowledge, and discovery had closed while trial was approaching, leaving Multimedia unable to depose or otherwise substantively rebut their information.
Procedural history
Multimedia Technologies filed a patent-infringement action against LG Electronics Inc. and LG Electronics USA, Inc. Defendants filed inter partes review petitions concerning some asserted patents and stipulated under Sotera that, if review was instituted, they would not pursue certain grounds in the litigation. After discovery closed, Multimedia moved to strike portions of Dr. Dan Schonfeld's expert report. The court denied the motion as to the prior-art issue based on its reasoning in a separate order, but struck portions of the report relying on undisclosed engineers.