Vasu Holdings, LLC v. Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.

Summary

The United States District Court for the Eastern District of Texas grants in part and denies in part Vasu Holdings, LLC’s motion to strike portions of Mark R. Lanning’s invalidity expert report. The court strikes five late-disclosed invalidating references and related opinions because disclosure in parallel inter partes review proceedings did not provide sufficient notice that the references would be asserted in the litigation. The court declines to strike the reference patents used in the obviousness-type double patenting analysis.

Holdings

1. Five invalidating references and any opinions based on them must be stricken from the invalidity expert report because disclosure of the references in parallel inter partes review proceedings did not provide notice that they would be asserted as prior art in the present litigation.
2. The expert's use of reference patents was not excluded because the other purpose of obviousness-type double patenting—to prevent double harassment—remained at issue.
3. Expert opinion testimony is admissible under Federal Rule of Evidence 702 when the expert's specialized knowledge will assist the trier of fact, the testimony is based on sufficient facts or data, it results from reliable principles and methods, and the expert reliably applies those principles and methods to the facts.

Questions Presented

1. Whether five prior-art references disclosed for the first time in an invalidity expert report after the close of fact discovery should be stricken when the references were not identified in the invalidity contentions.
2. Whether the expert's use of reference patents for an obviousness-type double-patenting analysis should be excluded.

Disposition

other