Holding: A court should only allow untimely expert testimony when there is a showing that the failure to disclose was either substantially justified or harmless. Cross-examination of the expert witness at trial does not cure the inability to depose the expert witness during discovery.
Trudell sued D R Burton for infringement of US Pat. No. 9,808,588, which is directed to a portable device for performing oscillatory positive expiratory pressure (OPEP) therapy. The district court set the close of discovery on September 30, 2022 and set a trial date of November 7, 2022. Trudell submitted expert reports on infringement and damages before the September 30 deadline. D R Burton submitted a seven-page declaration from its expert, Dr. Collins, in support of its opposition to Trudell’s motion for summary judgment on infringement on October 21, 2022.
Trudell filed motions in limine to exclude Dr. Collins’ testimony on invalidity and noninfringement. The district court initially denied the motion in limine three days before the start of trial, reversed its decision after Trudell filed a motion for reconsideration, and then reconsidered and ruled that it would allow Dr. Collins’ testimony. At trial, the jury found that the asserted claims of the ‘588 Patent were valid but not infringed. Trudell appealed the decision to allow Dr. Collins’ testimony and the district court’s denial of JMOL or a new trial.
Federal Rule of Civil Procedure 26 requires the parties in a case to identify expert testimony for use at trial, and the disclosure must be accompanied by a written report. The 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.
Under Federal Rule of Civil Procedure 37(c)(1), if a party fails to provide the information required by Rule 26, 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.”
Trudell argued that Dr. Collins’ testimony should be excluded because he did not comply with Rule 26 by failing to timely serve an expert report on noninfringement, and this failure was not substantially justified or harmless. Additionally, Trudell argued that to the extend that Dr. Collins’ October 2022 declaration and two other declarations filed in 2019 are considered an expert report, they should be excluded under Federal Rule of Evidence 702 as being unreliable and misleading.
The Federal Circuit held that the district court abused its discretion by allowing noninfringement testimony by Dr. Collins. His noninfringement opinions were not timely submitted in an expert report during the discovery period, as they were submitted three weeks after the close of discovery. Further, the district court did not explain why allowing Dr. Collins’ testimony was substantially justified or harmless. Trudell was not given the opportunity to depose Dr. Collins on his noninfringement theories after the submission of his declaration after the close of discovery. Although Trudell was allowed to cross-examine Dr. Collins at trial, this does not act as an acceptable substitute for the chance to depose an expert witness.
D R Burton argued that Trudell also submitted late expert reports, as Trudell’s expert reports on infringement and damages were submitted only 10 days and 1 day before the close of discovery. Rule 26(a)(2)(D)(i) typically requires that expert reports are disclosed at least 90 days before the trial date. However, this deadline does not apply when a court order or stipulation specifically allows for expert disclosure later the 90-day cutoff.
The Federal Circuit also found that the district court abused its discretion by failing to exclude Dr. Collins’ testimony because his declaration was unreliable under Rule of Evidence 702. In particular, Dr. Collins’ declaration did not follow the district court’s claim constructions when conducting his noninfringement analysis.
Despite finding that Dr. Collins’ noninfringement testimony should have been excluded, the Federal Circuit refused to grant Trudell’s motion for JMOL of infringement. Despite minimal evidence of noninfringement without Dr. Collins’ testimony, the jury was free to discredit the testimony of Trudell’s expert and find that Trudell did not meets its burden to prove infringement. However, the Federal Circuit reversed the district court’s denial of Trudell’s motion for a new trial.
The Federal Circuit also evaluated Trudell’s request that the case be reassigned to a different judge. This request was reviewed under Fourth Circuit law, which allows for reassignment for when a judge would have difficulty ignoring previously expressed view or findings; when reassignment preserves the appearance of justice; and when the reassignment would not incur waste and duplication out of proportion to the gain in preserving the appearance of fairness. In this case, the district court judge made several statements about trying to terminate the case as quickly as possible, and even made some of these statements in front of the jury during trial. Therefore, the Federal Circuit found reassignment to a different judge to be proper.
Federal Circuit Precedential 
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