Judge Richard G. Andrews recently deferred ruling on the part of a Daubert motion which sought to preclude an expert from offering testimony on § 112 defenses on which the expert testified he deferred to counsel. IPLearn, LLC v. Blackboard, Inc., C.A. No. 11-876 (RGA) (D. Del. Oct. 2, 2014). Judge Andrews indicated he likely would exclude the expert’s opinion on § 112 defenses, explaining “I am not convinced that these are [the expert's] opinions on the § 112 issues. I am quite sure that the legal citations . . . are not only not his, but to cases that he has not read. Therefore, I expect that I will exclude the opinions [addressing the § 112 defenses] of the report. I will, however, give Defendant an opportunity before trial to show that the § 112 opinions are indeed [the expert's] opinions.” Id. at 4. The Court proceeded to schedule a pretrial hearing to examine and cross-examine the expert on his § 112 opinions.
Earlier in the decision, the Court denied the Daubert motion to the extent it sought to exclude the expert based on his unfamiliarity with the presumption of validity and the need to prove invalidity by clear and convincing evidence. The plaintiff had argued that the defendant’s invalidity expert should be excluded from trial for failure to apply the clear and convincing standard or the presumption of validity. Judge Andrews agreed with the defendant, though, that the expert’s “failure to offer opinions on legal standards has no relevance because that is not the role of the expert.” Id. at 2. As the Court explained, “[c]lear and convincing evidence and the presumption of validity are not standards required of expert opinion on invalidity, but standards used by a factfinder. These are legal concepts that are for jury determinations, not for expert witnesses.” Id. at 4.