Attorneys Can Assist in Drafting Expert Reports, But Experts Must Substantially Participate

Aug 13, 2017

Reading Time : 1 min

Plaintiff Tech Pharmacy argued that the testimony of defendants’ expert should be excluded under Daubert because the expert’s report offered no independent analysis and simply parroted arguments from defendants’ Alice motion for summary judgment and from another expert’s report. Defendants noted that, while Rule 26(a)(2)(B) requires that an expert report be “prepared and signed by the witness,” counsel is not precluded from providing assistance to experts in preparing their reports.

Addressing the permissible amount of attorney involvement in drafting an expert report, the court concluded that, “as long as the substance of the opinions is from the expert, the attorney’s involvement in the written expression of those opinions does not make them inadmissible.” However, the court cautioned that, while some attorney involvement in the preparation of an expert report is permissible, allowing an expert to sign a report drafted entirely by counsel without prior substantive input would read the word “prepared” completely out of the rule.

In this case, defendants’ expert testified that defense counsel drafted sections of his report, which the expert edited and with which he ultimately agreed. In total, five of the 43 paragraphs in the expert’s report contained duplicative language from defense counsel’s prior Alice briefing. The court held that, although five paragraphs of the report indicated that defense counsel helped the expert prepare the report, nothing indicated that defense counsel rather than the expert was responsible for the remaining content of the report.

Ultimately, Tech Pharmacy’s concerns regarding the extent of defense counsel’s influence on the expert’s report went to the weight of the expert’s testimony rather than its admissibility. Hence, vigorous cross-examination, the presentation of contrary evidence and a careful instruction on the burden of proof were held to be the appropriate vehicles to challenge the expert’s report.

Tech Pharmacy Services, LLC v. Alixa RX LLC et al., Case No. 4:15-cv-766 (E.D. Tex., Aug. 3, 2017)

Share This Insight

Previous Entries

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

IP Newsflash

August 11, 2025

In considering a motion to dismiss infringement claims for two related patents, the District of Massachusetts recently held that pre-suit knowledge of a “parent” patent, without more, is insufficient to establish pre-suit knowledge of the “child” patent for purposes of indirect and willful infringement.

...

Read More

IP Newsflash

August 8, 2025

Following a jury verdict finding trade secret misappropriation, the District Court for the District of Massachusetts granted-in-part a plaintiff’s motion for a permanent injunction to prohibit defendants from using plaintiff’s trade secrets. The district court further required defendants to reassign to plaintiff patents and patent applications that disclosed or were derived from plaintiff’s trade secrets as part of its equitable relief.

...

Read More

IP Newsflash

August 6, 2025

In ruling on a recent motion to strike, a judge in the Eastern District of Texas permitted a damages expert to rely on a damages theory based on defendant’s “avoided costs,” holding that this theory did not run afoul of the “entire market value rule.”

...

Read More

IP Newsflash

August 5, 2025

The Federal Circuit recently vacated a decision by the Patent Trial and Appeal Board after concluding that the board’s analysis of licensing evidence offered as a secondary consideration of nonobviousness constituted legal error and was not supported by substantial evidence. According to the court, the board applied a more exacting and improperly heightened nexus standard than is required by law for license evidence.

...

Read More

IP Newsflash

August 5, 2025

A Northern District of California judge recently granted a motion to reconsider his summary judgment ruling that defendant was barred from raising certain “device art” due to IPR estoppel under 35 U.S.C. § 315(e)(2). In the original ruling, the judge adopted the broader rule that IPR estoppel applies to device art that is “materially identical” to patents or printed publications that petitioners raised, or could have raised, in an IPR. Following that ruling, however, the Federal Circuit issued its Ingenico decision adopting the narrower view that IPR estoppel applies only to “grounds” based on patents and printed publications and not to device-based grounds. Citing Ingenico as a “change of law,” defendant moved for reconsideration of the court’s ruling, and the court granted the motion.

...

Read More

IP Newsflash

August 5, 2025

In a recent decision designated as Informative, the USPTO Director determined that the Patent Trial and Appeal Board abused its discretion by instituting two inter partes review proceedings challenging the same patent, based on petitions advancing different constructions of the same claim term. The Director expressed concerns that permitting multiple petitions based on alternative claim constructions effectively circumvents word count limitations, strains board resources, and undermines procedural efficiency.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.