Sportvision, Inc v. MLB Advanced Media L.P.

Background

This patent-infringement and breach-of-contract action concerns Plaintiffs’ motion to strike portions of Dr. Ravin Balakrishnan’s opening expert report for Defendant. Dr. Balakrishnan offered opinions about whether certain patent claim terms were indefinite, meaning the patent claims allegedly failed to explain their scope clearly enough.

The court’s scheduling order required Defendant to identify its invalidity grounds, disputed claim terms, and intended expert evidence during 2020. Defendant identified some indefiniteness issues but did not identify expert opinions it would use on those issues. The parties then briefed and argued indefiniteness during the claim-construction process and at a claim-construction hearing. Defendant represented that the record was complete and that it did not plan or need to present additional expert testimony. Judge Gardephe indicated that he intended to decide indefiniteness in the claim-construction order, which had not yet been issued.

On March 17, 2023, Defendant served Dr. Balakrishnan’s report. The report addressed some claim terms that Defendant had not previously identified as indefinite and offered expert opinions on other terms without previously relying on expert testimony. Plaintiffs moved to strike the related portions as untimely. Defendant disputed that the disclosure was untimely and argued that indefiniteness could instead be addressed at summary judgment.

Legal standard

Federal Rule of Civil Procedure 26 requires expert disclosures at the times and in the sequence ordered by the court. Under Rule 37, a party that fails to make a required disclosure generally may not use the information or witness unless the failure was substantially justified or harmless. When deciding whether to exclude an expert report, courts consider four factors: the explanation for the delay, the importance of the testimony, the prejudice to the opposing party, and whether a continuance could remedy the prejudice.

Court’s analysis

The court held that Dr. Balakrishnan’s report was untimely for two independent reasons. First, Defendant failed to identify the relevant expert evidence as required by the scheduling order, and some of the newly challenged terms had not previously been identified as indefinite. Second, Defendant disclosed the report after the parties had fully briefed and argued indefiniteness and represented that the evidentiary record was complete.

The court nevertheless held that precluding, or excluding, the report was not warranted. Defendant’s explanation for the delay was inadequate, and Plaintiffs were prejudiced because they had briefed and argued indefiniteness without knowing Dr. Balakrishnan’s opinions or having an opportunity to depose him. The importance of the testimony weighed in Defendant’s favor because the report might assist Judge Gardephe in deciding the pending indefiniteness issues. The possibility of a continuance also weighed in Defendant’s favor because expert discovery remained open, the parties had not briefed summary judgment, the claim-construction order had not been issued, and no trial date had been set.

Disposition

The court denied Plaintiffs’ motion to strike. Plaintiffs were permitted to depose Dr. Balakrishnan and submit a rebuttal expert report addressing his indefiniteness opinions. The court awarded Plaintiffs their reasonable attorneys’ fees incurred in preparing the motion, conducting the deposition, and preparing the rebuttal report because Defendant offered no justification for the substantial delay. The court also precluded both parties from offering further supplemental invalidity contentions or expert opinions without prior permission from Judge Gardephe.