In DataQuill Limited v. High Tech Computer Corp., 3-08-cv-00543 (CASD), DataQuill asserted patent infringement against HTC. By the time expert reports were due, DataQuill had pared back its asserted claims to 80. With exhibits, HTC's invalidity report tipped the scales at over 50,000 pages. DataQuill moved to strike.
Expert witnesses are mandated to comply with Federal Rule of Civil Procedure 26(a)(2)(B), which provides:
The [expert] report must contain: (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 at trial or by deposition; and (vi) a statement of the compensation to be paid for the study and testimony in the case.
If an expert's report fails to satisfy Rule 26, Rule 37(c)(1) further provides that:
the party [proffering the report] is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless.
Given the potential for draconian sanctions for failing to satisfy Rule 26, DataQuill moved to strike HTC's invalidity expert report. DataQuill Limited v. High Tech Computer Corp., 3-08-cv-00543 (CASD August 26, 2011, Order) (Skomal, M.J.).
Interestingly, the thrust of DataQuill's motion was not that HTC's expert was deficient in providing the requisite information, but rather that the report failed to "state the testimony the witness is expected to present during direct examination at trial" (Doc. No. 112 at 2) because the expert report contained too much information (Id. at 2-4) and thus it would not be feasible for HTC's expert to present all of the bases for his invalidity opinions during trial.
The Court rejected DataQuill's argument seemingly for two reasons. First, DataQuill could cite no persuasive authority for its novel argument. Indeed, the Court stated that:
In the cases DataQuill relies on, the expert reports at issue failed to comply with Rule 26(a)(2)(B) because they were untimely, lacked sufficient detail, failed to include the reasons and bases for opinions, or were otherwise incomplete.... None of [the cases cited by DataQuill] determined that an expert report violated Rule 26's disclosure requirement for being overly detailed and thorough. Order at 3-4 (citations omitted).
Second, DataQuill had earlier opposed HTC's motion to limit the number of claims to be presented to the jury. DataQuill had originally asserted that HTC infringed 159 claims (which required over 4,000 pages for HTC's invalidity contentions). DataQuill pared down its claims to 80, but HTC moved that DataQuill be limited to a maximum of 10 claims "because HTC believed that allowing DataQuill to proceed to trial on more than 10 claims would be unreasonable and impractical." Order at 2:7-8. "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 2:10-12. "DataQuill opposed the motion, contending that the number of asserted claims would not be unmanageable ...." Id. at 2:12-13. HTC's motion was denied without prejudice.
It appears DataQuill, having previously opposed HTC's motion to limit the number of asserted claims and to reduce the sheer volume of information presented to the jury, the Court and the parties, but now was complaining about HTC's expert report because it included 36 exhibits totaling 51,749 pages, was being hoist with its own petard. Stated slightly differently, the Court was not persuaded by DataQuill's "TMI" argument, particularly given "[t]he purpose behind amending Rule 26 and requiring experts to serve written reports was to prevent parties from serving the 'sketchy and vague' responses to interrogatories that had become the norm." Order at 4:11-13.