A manufacturer appeaIntellectual Property Expert Witnessesled in a patent infringement case in the U.S. District Court for the Eastern District of Pennsylvania because the trial court granted a summary judgment of non-infringement and denied the plaintiff’s motion to strike the defendant’s IP expert declaration.  The plaintiff did not have the chance to depose the defendant’s expert. 

The Manufacturer sued a Technology Company alleging that defendant’s captive screws infringed various claims of the asserted the plaintiff’s patents and trademarks. A captive screw is a type of fastener for attaching two parts.

The district court found that the accused products did not infringe any of the asserted patent claims because the products did not meet specified limitations. In addition, the district court found that the accused products did not infringe the Manufacturer’s trademarks because the defendant company had not used the accused mark in commerce in the U.S.

The district court also ruled on a late-disclosed expert opinion determined that the Technology Co.’s products did not satisfy the limitation. Technology Co. did not disclose its IP expert’s non-infringement opinion until moving for summary judgment—the court’s deadline for disclosing expert reports. The Manufacturer moved to strike the IP expert’s declaration as untimely and prejudicial, arguing that it did not have an opportunity to depose the expert. The court denied Manufacturer’s motion to strike holding that the late disclosure was not prejudicial.

The U.S. Court of Appeals for the Federal Circuit, Judge Kimberly A. Moore wrote in her opinion that the district court clearly erred in finding the Manufacturer was not prejudiced.

The Technology Co. failed to disclose the IP expert’s opinion on time as required by both the Federal Rules of Civil Procedure and the district court’s scheduling order. Judge Moore said that, although the Manufacturer did not have the opportunity to depose the IP expert to learn about his tests and opinions, it presented expert testimony that the IP expert’s testing procedures were improper, and his conclusions unsupported.

The trial court reasoned that Manufacturer was not prejudiced because it responded to Technology Co.’s motion for summary judgment. At the same time, the court granted that motion in part because it determined that the Manufacturer’s expert’s response was conclusory. However, the Federal Circuit held that the district court abused its discretion by failing to give Manufacturer an opportunity to depose the IP expert, relying on his declaration, and then faulting Manufacturer for failing to rebut his opinion.

As a consequence, Judge Moore and the Federal Circuit reversed the denial of the motion to strike the IP expert’s declaration. However, it did not need to decide whether the prejudice could be cured on remand.

As far as granting the defendant’s motion for summary judgment of non-infringement, the Court of Appeals held that Manufacturer presented evidence raising a question of material fact.

Although Manufacturer carried the burden for proving infringement, the judge held that the defendant carried the burden of showing there was no genuine dispute of material fact when moving for summary judgment. Thus, the Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded.