Avago Tech. Gen. IP PTE LTD. v. Elan Microelectronics Corp. (PDF) 2007 U.S. Dist. LEXIS 55113 Decided July 20, 2007 Magistrate Judge Lloyd Elan submitted an expert report by Berthold Horn opining on invalidity of two of AvagoÃ¢â?¬â?¢s patents (Ã¢â?¬Ë?780 and Ã¢â?¬Ë?804). The ND Cal Local Rules were not strictly followed so portions of the report were stricken. ElanÃ¢â?¬â?¢s Final Invalidity Contentions (Ã¢â?¬Å?FICÃ¢â?¬Â?) did not exactly match up with HornÃ¢â?¬â?¢s expert report. For example, Horn mentioned that the Ã¢â?¬Ë?804 patent is invalid because it lacks a proper written description and the invention is not enabled. However, when Elan asked for leave to amend its FIC to add the written description and enablement theories, it only indicated that the theories applied to the Ã¢â?¬Ë?780 patent. As such, Magistrate Judge Lloyd ordered that all references to the written description or enablement theories in relation to the Ã¢â?¬Ë?804 patent be stricken from HornÃ¢â?¬â?¢s expert report. The court went on to strike another paragraph and an exhibit due to a pinpoint citation problem. Elan disclosed the prior art reference that Horn relied on in the expert report, but the pinpoint citation in the FIC did not match up with the pinpoint cite in HornÃ¢â?¬â?¢s report. Local Rule 3-3(c) requires:
a chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found.
Horn was not allowed to rely on any portion of the prior art that was not referenced by pinpoint citation. Who says pinpoint cites are only important for law reviews? Lastly Magistrate Judge Lloyd struck two more paragraphs because Horn relied upon a prior art reference not previously disclosed. Elan attempted to argue that Avago was put on notice of the prior art because it was cited in a previously disclosed reference and that Horn was not relying on the reference, but was merely Ã¢â?¬Å?working backwards fromÃ¢â?¬Â? it. HornÃ¢â?¬â?¢s elaboration on the reference in question convinced the court that Horn was relying on the reference. Thus, two paragraphs in the expert report which discussed the undisclosed prior art were struck.