Judge Stark: Failure to disclose intent to file rebuttal expert report results in finding of undue prejudice
In Biovail Laboratories International SRL v. Cary Pharmaceuticals Inc., C.A. No. 09-605-JJF-LPS, Judge Stark considered defendant’s motion to strike a supplemental expert declaration filed in support of plaintiff’s answering claim construction brief. Defendant argued that the supplemental declaration contained new opinions that should have been disclosed earlier and that Defendant would be prejudiced at the Markman hearing because it would not have had the opportunity to depose the expert on the new opinions or to have its expert prepare a rebuttal. Id. at ¶7. Plaintiff responded that the Scheduling Order did not preclude supplemental expert declarations, which are the norm, and did not contain a deadline for deposing experts. Id. at ¶8. Judge Stark denied defendant’s motion to strike. However, Judge Stark provided a less extreme remedy for defendant, noting that plaintiff’s conduct was far from laudable. Id. at ¶11. “While [plaintiff] has not engaged in willful deception, its silence as to its intent to file a rebuttal report and its failure to in any way disclose [its expert’s] rebuttal opinions at a time when [defendant] could test and/or respond to them appears to have had the consequence of deceiving [defendant] into believing that the record with respect to the opinions of claim construction experts was complete.” Id. Judge Stark also noted that plaintiff did file the supplemental expert declaration after the time for expert depositions had passed—such conduct being “inconsistent with the intent of the Scheduling Order. Id. Because defendant would be unduly prejudiced at the Markman hearing, Judge Stark delayed the hearing by four weeks and permitted defendant to take a second deposition of plaintiff’s expert, and provided that defendant could file a reply claim construction brief. Id. at ¶12. Furthermore, Judge Stark provided that defendant could file a motion for monetary sanctions after the Markman hearing if defendant “believe[d] that any unfair prejudice caused by [plaintiff’s] conduct ha[d] not been adequately ameliorated[.]” Id. at ¶13.