On September 24, 2014, a court in the Southern District of New York struck portions of an inventor’s expert report, finding that the inventor was not qualified to offer expert testimony on the infringement of his own patent and that his opinions were unreliable. The claims of the patent-in-suit relate to a patient-to-physician Internet messaging system. The plaintiff, 523 IP LLC, alleges that CureMD’s “Patient Portal” software infringes the claimed messaging system. To support its infringement claims, the plaintiff sought to rely on expert testimony from the inventor of the patent-in-suit, Joseph Sameh. The defendant filed a motion to strike portions of Sameh’s report addressing literal infringement, and the court granted the motion in part.  First, U.S. District Judge Katherine Polk Failla considered if Sameh was qualified under Federal Rule of Evidence 702 to offer an opinion on infringement. Judge Failla found that, although Sameh invented the patent and had expertise in doctor-patient communications, he was not qualified to testify as an expert regarding the computer or software engineering aspects of CureMD’s software. Judge Failla observed that, “[j]ust because Sameh came up with the idea for an apparatus that performs the actions outlined in the ’523 Patent does not automatically make him an expert in the technologies available to effectuate that apparatus.” The court, therefore, struck all portions of Sameh’s report relating to areas outside of his expertise.

Next, the court considered the substance of Sameh’s opinions on infringement and found them to be “conclusory, irrelevant, and unreliable.” According to Judge Failla, Sameh’s opinions comprised either “irrelevant advocacy” about the legal issue of claim construction, or assertions “so conclusory and obvious as to be unhelpful to the trier of fact.” As an example, Judge Failla characterized a portion of Sameh’s report as stating simply that “a form is a form.” Citing Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042 (Fed. Cir. 2000), Judge Failla concluded that Sameh’s unsupported infringement opinions were irrelevant to the issue of patent infringement and struck those portions of his report.

523 IP LLC v. CureMD.Com, 1-11-cv-09697 (S.D.N.Y. September 24, 2014) (Failla, J.)