Motion to Strike Portions of Rebuttal Expert Reports Granted and Motion for Summary Judgment of Non-Obviousness Denied

STS Software Sys. Ltd. and Nice Sys., Ltd. v. Witness Sys., Inc., No. 1:04-cv-2111 (N.D. Ga. Mar. 6, 2008) (Story, J.)

Judge Story granted the Plaintiffs’ Motion to Strike Portions of the Defendant’s Rebuttal Expert Reports because the reports contained new opinions on the obviousness of the patents-in-suit. Specifically, the Court found that the initial report of each expert stated that the patents-in-suit were invalid as obvious but did not provide any reason or basis for this conclusion; it was not until the experts submitted their rebuttal expert reports that they provided a substantive explanation and basis for their opinions on obviousness. Because the Plaintiffs would suffer prejudice as a result of the untimely disclosure of the opinions and because the Defendant did not offer a justification for failing to include the opinions in the initial reports, the Court granted, pursuant to Federal Rule of Civil Procedure 37(c)(1), the Plaintiffs’ Motion to Strike all portions of the rebuttal expert reports relating to obviousness and to exclude at trial all testimony relating thereto.

The Court next addressed the Plaintiffs’ Motion for Summary Judgment, wherein the Plaintiffs argued that because the new opinions presented in the Defendant’s expert reports were stricken, Defendant failed to carry its burden of proof on its obviousness defense. The Plaintiffs contended that without the expert reports, the Defendant has failed to provide any evidence of the scope and content of the prior art or any evidence that the patent claims are invalid as obvious. The Court disagreed, noting that “[a]lthough expert testimony is often a useful aid in considering the issue of invalidity, such testimony is not requisite to a finding of obviousness.” Because the Defendant pointed to other sources in support of its defense, such as fact witnesses that were prepared to testify regarding a prior art system, the Court concluded that a genuine issue of material fact existed on the question of obviousness and denied the Plaintiffs’ Motion for Summary Judgment.