In Munchkin, Inc. v. Tomy International, Inc., 1-18-cv-06337 (NDIL May. 24, 2022) the Court considered the permissible extent of attorney participation in the preparation of an expert report. The Court did so in response to plaintiff’s motion to exclude the testimony of defendant’s technical expert for failing to prepare his own report. Specifically, plaintiff Munchkin sought to exclude the opinion of defendant TOMY’s technical expert, Jesse Darley, who offered opinions regarding non-infringement.

In determining the admissibility of an expert opinion under Rule 702, the Court acts as a “gatekeeper” to determine whether the proffered expert testimony is reliable and relevant. In doing so, the Court asks whether: (1) the expert is “qualified by knowledge, skill, experience, training, or education”; (2) the proposed expert testimony will “assist the trier of fact in determining a relevant fact at issue in the case”; (3) the expert’s testimony is “based on sufficient facts or data and reliable principles and methods”; and (4) the expert “reliably applies the principles and methods to the facts of the case.” The party seeking to introduce the expert testimony bears the burden of demonstrating the expert testimony satisfies Rule 702 by a preponderance of the evidence. Here, Munchkin did not contest the expert’s qualifications, and thus the Court limited its analysis to the reliability of the reports and testimony.

Rule 26(a)(2)(B) requires an expert disclosure “must be accompanied by a written report—prepared and signed by the witness.” While “some attorney involvement in the preparation of an expert report is permissible,” the “expert must also substantially participate in the preparation of his report.” An attorney “preparing the expert’s opinion from whole cloth and then asking the expert to sign it if he or she wishes to adopt it conflicts with Rule 26(a)(2)(B)’s requirement that the expert ‘prepare’ the report.”

Here, Munchkin argues Darley’s opinion must be excluded because he did not prepare his own report. Rather, Munchkin says TOMY’s counsel drafted the opinion and Darley signed it.

In considering the motion, although the Court said TOMY and Darley toed the line of permissible attorney participation in an expert report, the Court stated it could not find Darley had no substantial involvement in the report. First, the Court noted Darley stated throughout his deposition that he dictated his opinions to counsel, counsel typed up the report, it was sent to him, and he made edits. Thus, the Court found it does not appear counsel wholly created the report based on his own opinion and asked Darley to sign off on it. Rather, the report reflects Darley’s expert opinion, but it was physically typed and prepared by counsel. The Court therefore declined to exclude Darley’s report and testimony on this basis.

However, the Court did exclude Darley’s report and testimony on another ground. Specifically, TOMY’s expert continued to argue for claim constructions that are opposite of those already adopted by the Court during claim construction. Thus, the Court found that as his view is inconsistent with the Court’s construction of these terms and his report and testimony will only serve to confuse the jury, the Court excluded his report and testimony.

This case acts as a strong reminder for counsel to be careful in their level of participation in the drafting and creation of expert reports, and also serves as a strong reminder to ensure expert reports are consistent with the rulings and orders of the Court so far.