Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Judge Ashman struck plaintiffs' expert report pursuant to Fed. R. Civ. P. 37(c)(1). Plaintiffs' authored the song "Is It Because I'm Black" in 1968. Plaintiffs' alleged that defendants, the musical group Cypress Hill (click here for some of the group's music on their MySpace page), infringed their copyright in the song by using parts of it in their Black Sunday album. Cypress Hill contended that plaintiffs sold the copyright pursuant to a 1969 songwriters contract. Plaintiffs argued that the contract was a fraud.

Plaintiffs submitted an expert report (the "Report") to support that the contract was fraudulent. In six paragraphs, the expert stated that he ran various tests and concluded that the 1969 contract was a fraud because it was printed and signed by an inkjet printer — inkjet printers were developed in the 1970s or 1980s. When Cypress Hill complained that the Report was incomplete, plaintiffs supplemented it with pictures of the testing.

But the Court held that the supplemented Report was not sufficient because it did not explain the expert's methodology. There was no way to know how the expert translated data into conclusions. And no reputable rebuttal expert could test the expert's methodology or opine that the data was misinterpreted. It did not matter that the missing information could likely be obtained in a deposition. Rule 26 requires that an expert report include "the basis and reasons" for the expert's opinions. Because the Report did not disclose the expert's methodology and reasoning, and because Cypress Hill was prejudiced by the late-served, incomplete Report, the Court struck the Report.

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Konvin Assocs. V. Extech/Exterior Techs., No. 04 C 2544, 2006 WL 2460589 (N.D. Ill. Aug. 21, 2006) (Kennelly, J.).

In this opinion, Judge Kennelly ruled on opposing summary judgment motions arguing invalidity and infringement issues.  As an initial matter, the Court refused to exclude opposing expert affidavits despite the fact that neither expert was disclosed as required by Rule 26(a)(2)(A).  The Court held that Rule 37(c) does not allow striking evidence based upon Rule 26(a) violations where the violation is harmless.  Because neither party argued that they were harmed by the failure to disclose the experts, the Court refused to exclude the expert affidavits.  The Court went on to deal with numerous invalidity and infringement issues, but I will focus on one more expert testimony issue.

Defendant argued that the patent claims were invalid because they were anticipated pursuant to 35 U.S.C. § 102.  To support its anticipation argument defendant relied upon a chart which identified how each element of the claim was found in the allegedly invalidating prior art, without citing to any expert testimony.  The Court denied the invalidity argument because defendant relied upon its chart without any proof from one of ordinary skill in the art, such as an expert witness.  Defendant's only expert testimony on the subject was a cursory statement from its expert that "certain" of the prior art patents included all limitations of the claim at issue.  So, defendant's anticipation argument failed without consideration on the merits.

Finally, a practice tip:  always respond to the opposing party's arguments.  Defendant argued that plaintiff was barred from arguing the doctrine of equivalents because it had disclosed the equivalent in the specification, but not claimed it (the "disclosure-dedication rule").  Because plaintiff failed to respond to the argument, the Court held that plaintiff conceded the issue and barred doctrine of equivalents arguments without considering the merits of the disclosure-dedication rule.

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