Genentech, Inc. v. Trustees of the University of Pennsylvania

Filing 473

ORDER by Judge Paul S. Grewal denying 450 Motion to Strike Late-Disclosed Expert Reports (psglc2S, COURT STAFF) (Filed on 2/2/2012)

1
2
3
4
5
6
7
8

United States District Court
For the Northern District of California

9
10
11
12
UNITED STATES DISTRICT COURT

13

NORTHERN DISTRICT OF CALIFORNIA

14

SAN JOSE DIVISION

15
16

GENENTECH, INC.,
Plaintiff,

17
18
19

v.
THE TRUSTEES OF THE UNIVERSITY OF
PENNSYLVANIA,
Defendant.

20
21
22
23

)
)
)
)
)
)
)
)
)
)

Case No.: C 10-2037 LHK (PSG)
ORDER DENYING DEFENDANT’S
MOTION TO STRIKE LATEDISCLOSED EXPERT REPORTS
(Re: Docket No. 450)

In this patent infringement action, Defendant and Counterclaim-Plaintiff The Trustees of
the University of Pennsylvania’s (“the University”) moves to strike what it presents to be two
expert “reports”1 for Plaintiff Genentech, Inc. (“Genentech”) that were untimely and that lack

24
25
26
27
28

1

Genentech disputes that these are reports at all, but refers to them as they are presented, which is
in the form of “memoranda” from the authors to Craig Henderson. For simplicity, the court will
refer to the two documents at issue as reports.
1

Case No.: C 10-2037 LHK (PSG)
ORDER DENYING DEFENDANT’S MOTION TO STRIKE LATE-DISCLOSED EXPERT
REPORTS

1

required disclosure information under Fed. R. Civ. P. 26(a)(2)(B).2 The University also moves to

2

strike references to the offending reports from the timely-produced report of Genentech’s expert,

3

Craig Henderson (“Henderson”).

4

I. FACTUAL BACKGROUND

5
6

The agreed-upon date for exchanging expert witness reports was the late evening of January
9, 2012. At that time, Genentech produced seven expert witness reports, including the Henderson

7
8

United States District Court
For the Northern District of California

9

report. In his report, Henderson twice references work conducted by the “Statistics Collaborative”
or “Statistics Collaborations.”3 The first reference appears in Henderson’s initial list of materials

10

considered,4 and the second in the body of the report.5 As Genentech realized a week later,

11

however, it failed to list the SCI reports in “Exhibit C” to the Henderson report, which provides the

12

definitive list or bibliography of “Materials Considered,” and to include the actual reports with the

13

other documents sent to the University as part of the original production. On the early evening of

14
January 16, 2012, Genentech notified the University by email of its oversight and forwarded copies
15
16

and a corrected version of Exhibit C to the Henderson report.6
The reports are dated September 19, 2011 and October 4, 2011. Counsel for Genentech

17
18

commissioned SCI in order to perform statistical analyses on the laboratory data behind the

19
20
21

2

Rule 26(a)(2)(B) requires that disclosure of any testifying expert witness must be accompanied by
a written report “signed” by the witness and containing other information, including the witness’
qualifications and other litigation appearances.

22

3

23

4

24
25
26
27
28

The proper name of the organization is Statistics Collaborative, Inc. (“SCI”).

See Docket No. 451, Ex. 2 (Henderson Report) & 12 (“The basis for my opinions and conclusions
include … (5) my review of two reports prepared by Statistics Collaborations concerning the
laboratory data underlying the ‘752 patent.”).
5

See id. & 139 (“Statistic Collaborative’s review of the data reveals that the reported p-value of
0.05 was false because the data support a p-value of, at best, 0.18 which is not supportive of Dr.
Katsumata and Dr. Greene’s conclusion.”).
6

See Docket No. 451(Wells Decl.), Ex. 3.
2

Case No.: C 10-2037 LHK (PSG)
ORDER DENYING DEFENDANT’S MOTION TO STRIKE LATE-DISCLOSED EXPERT
REPORTS

1

University’s ‘752 patent. The reports summarize the statistical analyses and conclusions of SCI’s

2

statisticians.7 Each report identifies errors and discrepancies that the SCI team discovered in

3

reviewing the University’s data, as it was used to generate the results described in the patent.

4

II. DISCUSSION

5
6

The University contends that Genentech’s failure to identify the reports in Exhibit C, the
“Materials Considered” section of the Henderson report, prevented the University from recognizing

7
8

United States District Court
For the Northern District of California

9

– in the midst of reviewing Genentech’s seven other voluminous expert reports – that material was
missing. According to the University, Genentech’s disclosure of the reports one week later

10

deprived the University of time that it critically needed to review the additional reports, conduct

11

related discovery, and prepare rebuttal material. In light of the schedule set by Judge Koh and her

12

notice of “no further modifications” to that schedule,8 the University argues that striking the reports

13

and references thereto is appropriate in order to prevent the burden of Genentech’s delay from

14
unfairly prejudicing the University.
15
Genentech acknowledges that it produced the two reports one week late, in part as a result

16
17

of a “last-minute scramble” to provide its expert document production by the time unreasonably

18

and suddenly imposed by the University after the parties attempted for days to agree on an

19

exchange procedure. But Genentech argues that the University grossly exaggerates any prejudice

20

because (1) the two expert reports are identified in the initial “Materials Considered” section in the

21
22

main text of Henderson’s report, and (2) the Henderson report substantively conveys the majority
of information, and the statistical conclusions, of the two SCI reports.9 For both of these reasons,

23
24
7

25

See Docket No. 451(Wells Decl.), Exs. 4, 5.

8

26
27
28

See Docket No. 413 (Order Setting Modified Case Schedule) (“No further modifications to the
case schedule will be permitted.”).

9

See Docket No. 459 (Thayer Decl.), Ex. J (chart comparing information presented in the SCI
reports with the Henderson report).
3

Case No.: C 10-2037 LHK (PSG)
ORDER DENYING DEFENDANT’S MOTION TO STRIKE LATE-DISCLOSED EXPERT
REPORTS

1

Genentech contends that the University was not in actuality deprived of the information it claims,

2

and furthermore has had ample time to begin its rebuttal using the information that was conveyed

3

in the Henderson report on time. Genentech also explains that because the reports are not being

4

offered as independent expert reports and the author(s) will not be called at trial, they are fully in

5

compliance with Fed. R. Civ. P. 26(a)(2)(B). Rather than striking the reports and references,

6
7
8

Genentech states that it will not oppose an order granting the University “several” extra days to
prepare its rebuttal report.10
The court may exclude evidence or strike pleadings pursuant to Fed. R. Civ. P. 37(c)(1) for

United States District Court
For the Northern District of California

9
10

failure to comply with the Rule 26 disclosure requirements, unless the failure was substantially

11

justified or is harmless. Courts generally enforce this provision for an unjustified or prejudicial

12

failure to comply with disclosure deadlines.11 But an inadvertent delay of one week is hardly

13

sufficient to warrant striking the reports and the references from the Henderson report. Instead, the

14
court will allow the University seven additional days to serve any and all of its rebuttal report,
15
16
17

placing the University where it would have been had the complete production by Genentech come
on time.12

18
19
20
10

21
22
23
24
25

See Docket No. 457 at 4-5 (Pl.’s Opp’n to Def.’s Mot. To Strike). At oral argument, Genentech
backtracked on its offer and stated that the extra days would be appropriate only for the University
to respond to information contained in the SCI reports that did not appear in the Henderson report,
such as the charts and graphs.
11

See, e.g., O2 Micro Int’l, Ltd. v. Monolithic Power Sys., 467 F.3d 1355, 1362, 1369 (Fed. Cir.
2006) (affirming district court’s exclusion of untimely expert report); Vnus Med. Techs. Inc. v.
Biolitec, No. C 08-3129 MMC(JL), 2010 WL 2629714, at *5-6 (N.D. Cal. June 29, 2010)
(excluding report submitted a month late and under pretense of it being a rebuttal report).
12

26
27
28

This modest delay may inconvenience Genentech, but it is an inconvenience of Genentech’s own
making, not the University or the court’s. In any event, it will not affect the overall case schedule.
See Docket No. 457 at 4. Genentech will still have more than a week to complete expert discovery
related to the University’s rebuttal report, well within the expert discovery deadline set by Judge
Koh’s scheduling order.
4

Case No.: C 10-2037 LHK (PSG)
ORDER DENYING DEFENDANT’S MOTION TO STRIKE LATE-DISCLOSED EXPERT
REPORTS

III. CONCLUSION

1
2

The court accordingly DENIES the University’s motion to strike late-disclosed expert

3

reports and ORDERS that the University may serve its rebuttal to the Henderson report no later

4

than seven days after the February 6, 2012 deadline for rebuttal expert reports.

5
6

Dated: 2/2/2012
_________________________________
PAUL S. GREWAL
United States Magistrate Judge

7
8

United States District Court
For the Northern District of California

9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

5

Case No.: C 10-2037 LHK (PSG)
ORDER DENYING DEFENDANT’S MOTION TO STRIKE LATE-DISCLOSED EXPERT
REPORTS