Free Motion in Limine - District Court of Delaware - Delaware

Case 1 :04-cv-01371-JJF Document 272 Filed 06/14/2006 Page 1 of 4
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June ifi, 2006 gggsgiggioéoy
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Re: Motion in limine re Fairchild expert testimony beyond expert rei:l>j<2iiiilsi¤@§[`COm
Power Integrotions, Inc. v. Fairchild Semiconductor International
® USDCLB. Del. — C.A. No. 04-1371 HF
MMM Dear Judge Faman:
.\'t'$'i`EN
¤¤<>$¤·<>~ Pursuant to paragraph seven ofthe Couit’s order of May 3 l, 2006, Power lntegrations
l>itt.t$ hereby submits this letter brief regarding l*`airchild’s technical experts’ attempts to
DELAWARE provide testimony beyond the scope of their expert disclosures. [DJ. 264].
Nw YORK Despite the clear law precluding expert witnesses from testifying beyond the scope of
SAN BMO their reports, both of Pairchild’s technical experts attempted to do just that,
SILICON VALLEY supplementing and/or wholly suppianting the disclosures in their reports when the
Twin crrrss time came for their depositions. Fairchild’s technical process expert, Dr. Peter
,,,,,,,,,NG,—O,., DC Gwozdz, provided a "Supplernentary" report the evening before his deposition was
scheduled to take place that changed his analysis ofthe Eklund ’075 patent
disclosures and relied on "new" prior art he did not address in his opening report.
Fairchild”s circuit expert, Dr. Paul Horowitz, similarly changed his testimony after
the Court-ordered cutoff for expert technical disclosures, and he sought to provide an
opinion during his deposition that certain prior art references rendered the patents-in-
suit obvious, despite having provided only conclusory statements in his report that the
limitations were "inherent or would be obvious? Dr. Horowitz also produced revised
claim charts the morning of his deposition, after closely reviewing the charts for the
first time in preparation for his deposition and realizing that he did not agree with the
statements contained in the charts others had prepared for him. Given the clarity of
the law on this topic, Power Integrations will not belabor the point; Power
lntegrations simply asks the Court to apply its welhestablished rules and prevent
Fairchild’s experts from testifying beyond the scope of the expert reports served in
accordance with the parties’ stipulated (and Couttordered) schedule for expert
disclosures.

Case 1:04—cv—01371-JJF Document 272 Filed 06/14/2006 Page 2 of 4
FISH si Rrcrrnrtnsoru tac.
The Honorable Joseph J. Faman, Jr.
June 14, 2006
Page 2
A. Parties Must Be Limited to Timely Disclosures in Their Experts’ Reports.
As the Court noted during the recent pretrial conference of May 31, 2006, the timely
disclosure of expert reports is essential to a party’s ability to prepare its case for trial.
Federal Rule of Civil Procedure 26(a)(2)(B) requires that
Except as otherwise stipulated or directed by the court, {thc disclosrue
of expert testimony] shall, with respect to a witness who is retained or
specially employed to provide expert testimony in the case . . . be
accompanied by a written report prepared and signed by the witness.
The report shall contain a complete statement of all opinions to be
expressed and the basis and reasons therefor; the data or other
information considered bythe witness in forming the opinions; any
exhibits to be used as a summary of or support for the opinions.
See Honeywell Int ’l Inc. v. Universal Avionics Systems Corp., 347 F. Supp. 2d 129,
135 (quoting F.R.C.P. 26(a)(2.)(l3)) (emphasis added).
When a party does not comply with the provisions governing expert disclosures and
attempts to provide expert opinions not contained in timely—served expert reports, the
Court has discretion to exclude the testimony under Rule 37, and the Federal Circuit
has unequivocally affirmed that new opinions and infomation disclosed after the
disclosure deadline for experts can be stricken for failure to make a complete, timely
disclosure. Trilogy Communications, Inc. v. Times Fiber Commnnicanons, Inc., 109
F.3d 739, 7 44—45 (Fed. Cir. 1997) (proper for district court to strike untimely expert
affidavit and supplemental reports that contained new opinions and information).
lndeed, this Court has the power to exclude such untimely expert testimony even
when doing so would prevent a party from offering g evidence in support of a
particular theory. Vllhen excluding expert testimony beyond that contained in the
report in Honeywell, the Court noted that plaintiff s expert had timely offered only
cursory statements regarding infringement under the doctrine of equivalents and
therefore excluded @ trial testimony on that topic:
To the extent that I~Ioneywell’s expert were to be permitted to testify
concerning purported infringement . . . under the doctrine of
equivalents, therefore, that testimony would necessarily be limited to
the conclusory assertions .... {T]hat testimony is insufficient [and}
Sandel would be entitled to a directed verdict ....
Honeywell ln! ’l, 347 F. Supp. 2d at 135.

Case 1:04—cv—01371-JJF Document 272 Filed 06/14/2006 Page 3 of 4
Pisa Sz Ricirxnnsou i>.c.
The Honorable Joseph J. Parnan, lr.
Ql une 14, 2006
Page 3
B. Fairchiid Cannot Cure Defects in the Original Reports by Untimely
Serving Amended Ones, or by Preparing its Experts to Offer New Opinions at
Deposition.
Fairchild’s process expert, Dr. Peter Gvvozdz, served a "Snpplernentary" expert report
the day before his deposition was to take place. {Ex. Al]- In this "Supplementary"
report, Dr. Gwozdz raised two sorts of new arguments, both of which shouid have
been addressed in his opening report. First, Dr. Gwozdz’s Supplementary Report
relied on art from the i9'/0s—l980s that he could have found before serving his initial
report. {Id. at {lil 34-41.] Second, Dr. Gwozdz changed his position with respect to
what he believed was taught in the notes of Klas Eklund, inventor ofthe Power
lntegrations ’075 patent.2 [Id. at {lll 6—8.] Because Dr. Gwozdz admitted the "new"
art was not provided to him by counsel until after he served his initial reports [Ex. B
at 104:7-109: E4] and he had, in fact, addressed Klas Ek1und’s notes in his initial
report {Ex B at 97: i5-98:2; 98:1 5—24 (“I had read it, and it had not ~- the significance
had not registered with me.")], the Court should prevent Dr. Gwozdz from offering
these new theories at trial.
Fairchild’s expert Dr. Paul Horowitz similarly seeks to put forth opinions on
obviousness not supported in his opening expert report, including opinions expressed
in claim charts first produced the morning of his deposition. Dr. t·iorowitz’s opening
report provided conclusory statements in claim charts that the prior art ‘“anticipates or
renders obvious" the claims of Power Integrations’ three circuit patents. [Ex. C]. At
his deposition, though, Dr. Horowitz admitted he had no opinion on inherency despite
the cursory statements in the claim charts attached to his opening expert report and
instead intended to testify that the claims were obvious. [Ex. D at 55: 19-58:4.] When
asked to identify any analysis of the issue of obviousness in his initial report, though,
Dr. Horowitz resorted to vague statements in the form of catch-all provisions
regarding obviousness, rather than any concrete analysis of why the claims of the
_patents—in—suit would have been obvious to a person of ordinary skill in the art. [Id. at
192:5-15 ("l have a statement somewhere later saying that —— as I do in paragraph 120,
for instance, that if you don’t buy my anticipation argument, then let me try an
obviousness argument on you.").} At times, Dr. Horowitz admitted that he did not
have any direct support for the conclusions in the report. [Id. at 97:8-18; 1l9:10—l3
(“Arn l correct in understanding there’s no detailed support inthe claim chart for that
conclusion, right? A: That’s correct"); 192:5-15.} The conclusory testimony in Dr.
l All exhibit citations refer to the accompanying Declaration of Tara D. Elliott.
2 Fairchild’s primary defense on the ’075 is invalidity based on alleged prior
invention by an individual then at Harris Corporation and now at lntersil. Thus, the
content of Dr. Eklund’s own hand—written notes evidencing conception is a core issue
in this case.

Case 1:04—cv—01371-JJF Document 272 Filed 06/14/2006 Page 4 of 4
Frstt sz Rtcnnnoson t>.c.
The Honorable Joseph J. Farnan, Jr.
June I4, 2006
Page 4
i~lorowitz’s report on obviousness cannot support a finding of obviousness; as in
Honeywell, the Court should preclude Dr. Horowitz. from providing any such
conclusory testimony at trial.
Dr. Horowitz also attempted to supplement the opinions in his report at his deposition
with new arguments in the form of hand—rnarked revisions to the claim charts attached
to his original report. [Ex. E}. When Power lntegrations counsel inquired as to the
basis for Dr. Horowitz’s new claim charts and testimony, Dr. Horowitz noted that he
did not write his own claim charts and had instead signed off on others’ work that he
later could not support. [Ex. D at 55:19-56: i 1; 57:1668:4]. Dr. Horowitz explained
that he first reviewed the claim charts closely and made revisions inthe days leading
up to his deposition despite having signed off on his expert report on November 30,
2005. {Id. at $5:19-56:11; 57: t6—58:4; 103:l—l1 ("[T]he claim charts were alittle bit
of a blend of charts that had been prepmed earlier in connection with this action and
some that l had worked on, some that Dr. Wie worked on. And it seemed prudent to
go through these before today to see if there were missing things or misstated things
or overstated things. And this is the result of one pass through them to accomplish
that.").]
Fairchild’s actions do not comport with the orderly discovery process contemplated
by this Courts orders or the Federal Rules of Civil Procedure, and Fairchild cannot
justify its experts’ untimely disclosures of new opinions. Power lntegrations
therefore respectfully asks the Court (l) to preclude Dr. Horowitz from offering any
testimony regarding obviousness or the new claim charts first produced the morning
of his deposition and (2) to preclude Dr. Gwozdz from offering any testimony
regarding prior art and documents he had or could have had at the time he served his
initial expert reports, specifically including new testimony about the content or
meaning of Dr. Eklund’s conception notes.
Respectfully,
`jléji
William J. rsdenj Jr. it rg
WEM/mrh
cc: G. Hopkins Guy, Esquire (via First Class Mail)
Steven J. Balick, Esquire (via ECF and Hand Delivery)
scoiiossnoc