Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

Defendant moves to strike on the basis that the inventor is not qualified to opine on validity and infringement, that the declaration is a sham to avoid summary judgment, and that the expert does not rely on the Court’s claim construction.  At his deposition, Reed, an inventor of the patents-in-suit and 30(b)(6) designee, testified that he was not qualified to testify as to infringement or validity. In his second declaration Reed offers opinions on those topics.  The Court finds that there is no requirement that the expert expressly reference the Court’s claim construction and notes there is no inconsistency in the testimony offered and the Court’s construction.  With respect to invalidity and infringement, the scope of Reed’s testimony which would be permitted at trial was limited during the pretrial conference.  The Court will not consider the second declaration in its resolution of summary judgment issues.  It does not consider Reed’s second declaration a sham declaration as Defendant urges, but it is troubled by the responses, or lack thereof, during the deposition and will permit defendant to redepose him on the topics included in its motion to strike and in limine motion.  The Court’s requirement of one expert for each subject matter for each party is unaffected in the absence of good cause shown.