Rule 26 of the Federal Rules of Civil Procedure requires a party to disclose the identity and expected testimony of its testifying experts.169 Under Meyer Intel-lectual Properties Ltd. v. Bodum, Inc.,170 Rule 26 governs one prerequisite of a qualified expert.171 If an expert fails to prepare a written expert report, required by Rule 26(a), including “a complete statement of all opinions the witness will express and the basis and reasons for them”172 and such report cannot “convey the sub-stance of the expert’s opinion ... so that the opponent will be ready to rebut, to cross-examine, and to offer a competing expert if necessary,”173 then a district court may exclude such expert from testifying.174
One example of a deficient expert report is “an expert report that merely lists a number of prior art references and concludes that one skilled in the art would find the claims obvious.”175 In Innogenetics, N.V. v. Abbott Labs.,176 the report written
168 Id.
169 See GENE R. SHREVE & PETER RAVEN-HANSEN, UNDERSTANDING CIVIL PROCEDURE 324
(LexisNexis 3d ed. 2002).
170 Meyer Intellectual Properties Ltd. v. Bodum, Inc., 690 F.3d 1354 (Fed. Cir. 2012).
171 See id. at 1374-75.
172 See id. at 1374.
173 See id. at 1374-75.
174 See id. at 1375.
175 Id.
176 Innogenetics, N.V. v. Abbott Laboratories, 512 F.3d 1363 (Fed. Cir. 2008).
by the defendant’s expert “merely [list] a number of prior art references and then [concluded]” that the disputed claim was obvious.177 Under the Federal Circuit case law, “there must be some articulated reasoning with some rational underpin-ning to support the legal conclusion of obviousness.”178 Because the report stated nothing about “how or why a person ordinarily skilled in the art would have found the claims of the [disputed] patent obvious in light of some combination of those particular references,”179 the Federal Circuit held “Such vague testimony would not have been helpful to a lay jury in avoiding the pitfalls of hindsight that belie a determination of obviousness.”180 As a result, the Federal Circuit “affirmed the district court’s decision precluding the expert’s vague and conclusory testimony regarding obviousness.”181
It should be noted, however, that a report that “contains a sufficiently detailed statement of his opinions and the bases for [the] conclusions”182 may qualify as a written expert report required by Rule 26.183 In Meyer Intellectual Properties Ltd., the expert report “defined a person of ordinary skill in the art” and “provided de-tailed claim charts comparing the asserted claims to the relevant prior art.”184 The expert report, however, did not explain a way of how a person of ordinary skill in the art would have been motivated to combine these prior arts, but merely stated such person “would have been familiar with” prior arts to conclude that “the com-bination would have been obvious” and that the invention only copied an old
177 Id. at 1373.
178 Id. (citation omitted).
179 Id.
180 Id.
181 Meyer Intellectual Properties Ltd. v. Bodum, Inc., 690 F.3d 1354, 1375 (Fed. Cir. 2012).
182 Id.
183 See id. at 1375-76.
184 Id. at 1375.
ratus and method.185 Still, the Federal Circuit recognized such expert report as a Rule 26 report because the technology involved there was not complex.186 The Federal Circuit even accepted simple explanation such as “common sense” as one form of motivation.187
Moreover, under Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics
& Plastics, Inc.,188 while admitting expert testimony, a district court judge may limit the scope of testimony to what has been disclosed to another party. In Siemens Med. Solutions USA, Inc., the infringement issue focused on the Doctrine of Equivalents.189 The defendant’s expert had an experience with the claimed ele-ment and its asserted equivalent.190 However, the experience resulted from the ex-pert’s participation in a research related to national security issues.191 As the result, the expert could not “use any work-related materials in the litigation” or “produce any [research institute’s] documents during discovery.”192 Instead, the expert pre-pared the opinion by recollection without reviewing those government-owned, classified materials.193 The district court found that although the expert’s opinion cited some references that are documents from the research institute, it was unfair that the plaintiff could not examine those references that form the basis of the ex-pert’s analysis.194 Therefore, the district court granted the plaintiff’s “motion to
185 Id.
186 Id.
187 Id.
188 Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d
1269 (Fed. Cir. 2011).
189 See id. at 1278.
190 See id.
191 See id.
192 See id.
193 See id.
194 See id.
exclude portions of [the expert’s] testimony that were not disclosed in discovery,”
such as the expert’s report or deposition, and held that the expert could not rely on the testing that was not disclosed to the plaintiff during discovery as well.195
The defendant challenged the district court’s exclusion.196 The Federal Cir-cuit affirmed the district court’s ruling and held that the district court only “im-posed sensible limitations on pro“im-posed testimony based upon undisclosed data and information.”197 The Federal Circuit considered that the district court’s ruling comported with two provisions of the Federal Rules of Civil Procedure.198 Primar-ily, the district court’s ruling followed Rule 26 by which experts are required to
“provide a written report containing a complete statement of all opinions the wit-ness will express and the basis and reasons for them and the facts or data consid-ered by the witness in forming them.”199 Rule 26 strengthens “fundamental fair-ness [which] requires disclosure of all information supplied to a testifying expert in connection with his testimony.”200 Because the plaintiff in Siemens Med. Solutions USA, Inc. “had no principled way to test his recollection and opinion,”201 the dis-trict court was right on limiting the testimony of the defendant’s expert.202
195 See id.
196 See id. at 1285.
197 See id. at 1286.
198 See id. at 1286-87. The other provision is Rule 37, where “if a party fails to comply with
Rule 26(a), the party 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.” See id. at 1287 (quotation omitted) (citing Fed. R. Civ. P. 37(c)(1)). Because the defendant did not “argue that its failure to disclose was substantially justified or harmless,”
the Federal Circuit did not discuss the issue related to Rule 37. See id.
199 Id. at 1286 (quotation omitted) (citing Fed. R. Civ. P. 26(a)(2)(B)(i)-(ii)).
200
Id. (citation omitted).
201
Id. (citation omitted).
202 Id.
In conclusion, to stand in front of a jury, a party must disclose an expert report under Rule 26 of the Federal Rules of Civil Procedure. The court can then consider whether to admit such expert testimony or whether to limit such expert testimony to what was disclosed in the Rule 26 report.