Attorneys Can Assist in Drafting Expert Reports, But Experts Must Substantially Participate

Aug 13, 2017

Reading Time : 1 min

Plaintiff Tech Pharmacy argued that the testimony of defendants’ expert should be excluded under Daubert because the expert’s report offered no independent analysis and simply parroted arguments from defendants’ Alice motion for summary judgment and from another expert’s report. Defendants noted that, while Rule 26(a)(2)(B) requires that an expert report be “prepared and signed by the witness,” counsel is not precluded from providing assistance to experts in preparing their reports.

Addressing the permissible amount of attorney involvement in drafting an expert report, the court concluded that, “as long as the substance of the opinions is from the expert, the attorney’s involvement in the written expression of those opinions does not make them inadmissible.” However, the court cautioned that, while some attorney involvement in the preparation of an expert report is permissible, allowing an expert to sign a report drafted entirely by counsel without prior substantive input would read the word “prepared” completely out of the rule.

In this case, defendants’ expert testified that defense counsel drafted sections of his report, which the expert edited and with which he ultimately agreed. In total, five of the 43 paragraphs in the expert’s report contained duplicative language from defense counsel’s prior Alice briefing. The court held that, although five paragraphs of the report indicated that defense counsel helped the expert prepare the report, nothing indicated that defense counsel rather than the expert was responsible for the remaining content of the report.

Ultimately, Tech Pharmacy’s concerns regarding the extent of defense counsel’s influence on the expert’s report went to the weight of the expert’s testimony rather than its admissibility. Hence, vigorous cross-examination, the presentation of contrary evidence and a careful instruction on the burden of proof were held to be the appropriate vehicles to challenge the expert’s report.

Tech Pharmacy Services, LLC v. Alixa RX LLC et al., Case No. 4:15-cv-766 (E.D. Tex., Aug. 3, 2017)

Share This Insight

Previous Entries

IP Newsflash

April 1, 2025

The District of Delaware recently denied in part a motion to compel production of documents and testimony between a patentee and potential investors, valuation firms and an international bank based on the common interest exception. In so doing, the court reaffirmed that disclosure of privileged information to third parties will generally waive privilege unless it can be shown that the parties’ interests are identical and the communications are legal, not solely commercial.

...

Read More

IP Newsflash

March 24, 2025

The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) final written decision holding that the prior art exception of AIA Section 102(b)(2)(B) does not apply to a prior sale by an inventor when the sale is conducted in private. According to the Federal Circuit, a sale must disclose the relevant aspects of the invention to the public to qualify for the prior art exception of Section 102(b)(2)(B).

...

Read More

IP Newsflash

March 21, 2025

Under the Lanham Act, a plaintiff who prevails on a trademark infringement claim may be entitled to recover the “defendant’s profits” as damages. The Supreme Court in Dewberry Group, Inc. v. Dewberry Engineers Inc. unanimously construed “defendant’s profits” in 35 USC § 1117(a) to mean that only the named defendant’s profits can be awarded, not the profits of other related corporate entities. The Court, however, left open the possibility that other language in § 1117(a) may allow for damages linked to the profits of related entities, if properly raised and supported.

...

Read More

IP Newsflash

March 13, 2025

In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short, a parenthetical citation was held to be insufficient, while three passages discussing a cited reference met the test.

...

Read More

IP Newsflash

March 4, 2025

On February 28, 2025, the USPTO announced that it was rescinding former Director Vidal’s 2022 memorandum on discretionary denials by the Patent Trial and Appeal Board. The 2022 memorandum effectively narrowed the application of discretionary denials in cases with parallel district court litigation by specifying instances where discretionary denial could not be issued. With the withdrawal of the memorandum, individual PTAB panels will regain flexibility in weighing discretionary denials. While the long-term effect of that increased flexibility is not yet known, the immediate effect is likely to be a shift towards the discretionary analysis applied by PTAB panels before the issuance of the memorandum.

...

Read More

IP Newsflash

March 3, 2025

A District of Delaware judge recently granted a defendant’s motion to include a patent prosecution bar in its proposed protective order after determining that litigation counsel’s ability to practice before the Patent Office—without ever having represented the plaintiffs at the Patent Office in the past—weighed heavily in favor of the bar.

...

Read More

IP Newsflash

February 12, 2025

The Federal Circuit recently reversed a district court decision that found a patent that did not describe after-arising technology failed to satisfy the written description requirement. In so doing, the Federal Circuit explained that written description and enablement are evaluated based on the subject matter that is claimed, not the products that practice those claims. As a result, the patentee was not required to describe unclaimed, later-discovered features of the accused products despite the broad language in the claims that undisputedly covered the products.

...

Read More

IP Newsflash

January 24, 2025

The District of Delaware recently rejected a patentee’s argument that non-production of an opinion letter from counsel, combined with knowledge of the patent, warranted a finding that defendant induced infringement.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.